Myanmar Ministry of Science and Technology

Myanmar Study on Cooperation for the Establishing of Intellectual Office

Final Report

March 2014 Japan International Cooperation Agency Kyoto Comparative Center

Oh-Ebashi LPC & Partners IL

JR

14-039

Contents

Map of Myanmar Abstract

Chapter I: Introduction 1.1 Background ···················································································· 1 1.2 Framework of the Survey ·································································· 1 1.3 Survey Target ·················································································· 4 1.4 Activities and Schedule ······································································ 4 1.5 Survey Method ·············································································· 5 1.6 Survey Itinerary ············································································· 7

Chapter II: Current Status of Intellectual System 2.1 Current Status of Law System ····································· 11 2.1.1 Overview of Intellectual Property Law System ····································· 11 2.1.2 Law ·········································································· 11 2.1.3 Law ················································································ 16 2.1.4 Industrial Law ·································································· 17 2.1.5 Law ··········································································· 18

Chapter III: Concerned Ministries for Intellectual Property 3.1 Survey Target ·················································································· 25 3.2 Ministry of Information ······································································ 25 3.3 Ministry of Industry ·········································································· 26 3.4 Ministry of Communication and Information Technology ······························ 27 3.5 Ministry of Commerce ······································································· 28 3.6 Ministry of Home Affairs ···································································· 29

Chapter IV: Current Situation of Intellectual Property and Intellectual Property Office 4.1 Intellectual Property Development Plan of Myanmar ··································· 33 4.1.1 Patent Law ················································································ 34 4.1.2 Law ·································································· 35 4.1.3 Tradmark Law ··········································································· 35 4.1.4 Copyright Law ··········································································· 36 4.1.5 Process of Enactment of Law ·························································· 37 4.1.6 Position of MOST ······································································· 38 4.2 Current Situation on the Establishment of Intellectual Property Office ··············· 38 4.2.1 Background ··············································································· 38 4.2.2 Role and Functions of Intellectual Property Office ································· 39 4.2.3 Business of Intellectual Property Office ·············································· 41

Chapter V: Current Intellectual Property Situation 5.1 Introduction ···················································································· 45 5.1.1 Trademark ················································································ 45 5.1.2 Copyright ················································································· 48 5.1.3 and industrial ·························································· 49 5.2 Current Intellectual Property Situation of Company ····································· 50 5.2.1 Company A ··············································································· 51 5.2.2 Company B ··············································································· 52 5.2.3 Company C ··············································································· 53 5.2.4 Company D ··············································································· 54 5.2.5 Company E ··············································································· 55 5.2.6 Company F ··············································································· 55 5.2.7 Company G ··············································································· 57 5.3 Awareness of Issues on Intellectual Property by Companies ··························· 58 5.4 Current situation of Enforcement among Ministries ····································· 59 5.5 Necessity of Establishing a Proper Scheme for Enforcement ·························· 60 5.6 Enforcement Body in ASEAN ······························································ 61

Chapter VI: General Outcomes and Proposals 6.1 General Outcomes ············································································ 65 6.1.1 Vision ····················································································· 68 6.2 Proposals ······················································································· 75 6.2.1 Propoals on Intellectual Property Laws and Detailed Regulations ··············· 77 6.2.2 Proposals on establishment of the Intellectual Property Office ··················· 82 6.2.3 Function Facilitation of Overall Intellectual Property System ···················· 92

Appendix

Appendix 1 Reports of the Dialogues 1. 1st Dialogue ························································································ 111 2. 2nd Dialogue ······················································································· 125 3. 3rd Dialogue ······················································································· 141

Appendix 2 Reports of the Seminars 1. Seminar on 3 February, 2014 (Nay Pyi Taw) [basic Intellectual Property] ··············· 153 2. Seminar on 4 February, 2014 (Nay Pyi Taw) [Enforcement] ······························· 158 3. Workshop on 7 December, 2013 (Yangon) ···················································· 161 4. Workshop on 5 February, 2014 (Mandalay) ·················································· 165 5. Summary of the Seminars and Workshops ···················································· 169

Appendix 3 ASEAN Survey Report Indonesia ······························································································ 179 Malaysia ······························································································ 204 Thailand ······························································································· 235 Vietnam ······························································································· 266

Appendix 4 Roadmap (tentative) ····························································· 317

Appendix 5 Lists of Names ····································································· 323

Map of Myanmar

（Source：www.un.org/Depts/Cartographic/map/profile/myanmar.pdf） Abstract

This project on the system and management of intellectual property rights (hereinafter referred to as “IPR”, and intellectual property as “IP”) in Myanmar was conducted with the cooperation of (hereinafter referred to as “JPO”), Agency for Cultural Affairs, etc. aiming to promote preparation of environment where the establishment plan can be formulated and implemented through deepening understanding of public and private stakeholders and coordinating their opinions. Specifically, while keeping the following four points in mind, three dialogues, interview surveys in Myanmar, and survey of ASEAN nations were conducted. (i) To recognize the current situation of IPR system and its administration and identify the challenges in Myanmar as well as to confirm the progress of IPR system development and identify the challenge. (ii) To make public and private stakeholders of Myanmar to better understand IPR through seminars and dialogues, foster common understanding on IP Office, examine the establishment plan, and make the stakeholders share the concept. (iii) To collect and sort out information on the current state and the situation at the time of establishment of IP administrative organizations in Japan and neighboring countries, and extract applicable cases for Myanmar. (iv) To summarize the proposals for establishment of IP Office, and make presentation of the recommendations in the seminars and dialogues.

The contents of project as contained in Chapter I to VI are summarized from below-Chapter I to VI.

Chapter I describes the framework of surveys, survey targets, and timeline of survey of this project.

Chapter II summarizes the current IP system in Myanmar. Although Myanmar has no IP laws except for Copyright Act, trademark is protected by registration under common law. Therefore, this chapter put together mainly trademark and copyright. In addition, the remedy system based on various laws is also compiled.

Chapter III describes the ministries relevant to IP. The activities of respective ministries concerning IP are introduced based on the interview survey.

Chapter IV sums up the situations of IP four laws and establishment of IP Office. Ministry of Science and Technology (hereinafter referred to as “MOST”) plays a central role for enacting IP laws and establishing IP Office. The findings from three times of dialogues in this project are put together. Since the draft laws are frequently revised and changed, only main points are written.

Chapter V summarizes the current state of IP in Myanmar. Together with the situation of rampant counterfeits and pirated goods discovered through the survey in Yangon city, the measures taken by Japanese-affiliated companies and their issues and concerns gathered found through the interview survey are compiled.

Chapter VI wraps up the surveys and suggests the vision which shall be shared among the relevant organizations in order for the IP system of Myanmar to better function. After that, the proposals are compiled as the outcome of this project. Among them, the proposals for IP section of MOST (from Proposal 1 to Proposal 15) have been compiled by the “Support Team for Organizing Myanmar’s Intellectual Property System for Organizing Myanmar’s Intellectual Property System” headed by Director of the International Cooperation Division, Japan Patent Office. Among other proposals (after Proposal 16) targeted to IP section and other members relating to enforcement body , proposals 20(1), 25 and 26 have been compiled by the JPO Support Team. Meanwhile, the “Roadmap (tentative)” that sums up these recommendations chronologically is attached as an appendix.

Chapter I Introduction

Chapter I: Introduction

1.1 Background

Myanmar acceded to the World Trade Organization (WTO) in January 1995 and thus has to comply with the Agreement on Trade-Related Aspects of Intellectual Property Rights ( hereinafter referred to as “TRIPS Agreement”). [*The period for transitional arrangement was extended to 1 July, 2021 from 1 July, 2013.] The Government of the Republic of the Union of Myanmar is well aware of the importance of establishing IP system for attracting FDI and fostering domestic industry and initiates to accelerate the development of the system. At present while the government promotes legal development of IP related four laws (Patent Law, Industrial Design Law, Trademark Law, and Copyright Law), it considers the establishment of IP Office as an IP administrative agency. After the IP related laws are enacted and enforced, it is necessary to accept and examine applications of patents, etc. and to register them. However, the country is still in the situation where she has not consolidated the establishment plan including the most fundamental items like what kind of organizational structure IP Office should have and under which Ministry IP Office should be operated.

Under these circumstances, Japan International Cooperation Agency (JICA) conducted Local Needs Assessments in April and June 2013, and confirmed the request from Ministry of Science and Technology of Myanmar in charge of establishing IP Office for Japanese support concerning the establishment of IP Office. On top of that, it was urgently required to develop the IP system of Myanmar as a member state of the Association of South East Asian Nations (ASEAN) which aims at establishing ASEAN Community by 2015.

1.2 Framework of the Survey

(1) Objective of the Survey This survey aims to promote development of the environment where the establishment plan can be formulated and implemented while deepening understanding of public and private stakeholders and coordinating their opinions concerning IPR system and its administration in Myanmar. The specific objectives are as follows:

(i) To recognize the current situation of IPR system and its administration and identify the challenges in Myanmar as well as to confirm the progress of IPR system development and identify the challenges.

(ii) To make public and private stakeholders of Myanmar to better understand IPR through seminars and dialogues, foster common understanding on IP Office, examine the

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establishment plan, and make the stakeholders share the concept.

(iii) To collect and sort out information on the current state and the situation at the time of establishment of IP administrative organizations in Japan and neighboring countries, and extract applicable cases for Myanmar.

(iv) To summarize the proposals for establishment of IP Office, and make presentation of the proposals in the dialogue.

(2) Implementation Policy The above-mentioned objectives (i) to (iv) are implemented with the following policies-

(i) Cooperation from Japan Patent Office and Agency for Cultural Affairs, etc. We have incorporated to the fullest extent the input of experts of Japan Patent Office, Agency for Cultural Affairs and the “Support Team for Organizing Myanmar’s Intellectual Property System” (hereinafter referred to as “JPO Support Team”) attending the seminars and dialogues conducted in this project. The JPO Support Team, a mixed team of public and private aiming to promote the establishment of IP environment in Myanmar, has been formed as Minister of Economy, Trade and Industry visited and expressed strengthening the official support for establishing IP Office in Myanmar in August 2013. The objectives are to understand the needs through dialogues, and to provide necessary proposal for drafting IP laws and establishing IP Office.

For making the program of seminars and dialogues, we examined the program based on the duty of the experts in charge of both organizations and prepared the overall program after coordinating with Myanmar side. In addition, the opinions of experts from Ministry of Economy, Trade and Industry and Ministry of Foreign Affairs at the meeting on Correspondence Policy in Japan were taken into consideration.

(ii) Target Organization Designating the Ministry of Science and Technology (hereinafter referred as “MOST”) which is the focal point for the establishment of IP Office in Myanmar as the counterpart, we targeted Ministry of Industry, Ministry of Commerce, Ministry of Communication and Information and Technology, Union Attorney General's Office, Supreme Court, etc. as governmental organizations, and also scholars, law firms, Federation of Chamber of Commerce and Industry, private-sector associations, etc. as private stakeholders. Since it is important for public and private stakeholders relevant to IPR administration to better understand the IPR system and foster the common concept towards the establishment of IP Office, we set out to promote participation in the seminars and dialogues by these relevant organizations.

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(iii) Preparation of Proposal through Dialogue with Stakeholders of Myanmar In order to examine the establishment plan of IP Office, we considered how IP Office should be operating, through the discussion with the concerned officials of MOST, based on the organizational structure of IP Office prepared by MOST and drafts of IP related four laws (Patent, Industrial Design, Trademark, and Copyright), and tried to summarize them as proposals which could be shared among stakeholders of Myanmar.

(iv) Seminar and Dialogue The seminar and dialogue for government officials of MOST and relevant ministries and agencies and the dialogue targeted only for the IP Section of MOST, which is responsible for drafting IP laws (patent, industrial design, trademark and copyright) and establishing IP Office, were held in Nay Pyi Taw, while the seminars for private-sector stakeholders including law firms and enterprises were convened in Yangon, the largest commercial city and Mandalay, the second largest commercial city of Myanmar. The provision of information and enhancement of awareness of basic knowledge of IP and importance of enforcement were sought for at the seminars.

(v) Interview with Japanese Corporations As the development of IPR system in Myanmar is very important for attracting investment from Japan, Interview surveys were conducted with Japanese-affiliated companies in Myanmar and Japanese corporations in Japan with regard to their IP activities. We summarized current situation and problems that private companies were facing and strived to make proposals as to the IPR system to the stakeholders of Myanmar.

(vi) Survey of IP System in Neighboring ASEAN Countries We aimed at extracting applicable cases in Myanmar by investigating the current state and the situation at the time of establishment of IP administrative organizations in neighboring countries. The four ASEAN countries of Indonesia, Malaysia, Thailand, and Vietnam were targeted.

(vii) Target Area The target areas of this survey are as follows:- Dialogue: Nay Pyi Taw Seminar: (for general public)Yangon, Mandalay/ (for government officials) Nay Pyi Taw Interview (Japanese Corporations): Yangon, Tokyo, Kyoto

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1.3 Survey Target

(1) Governmental Organizations The dialogues are mainly targeted to IP section of MOST especially responsible for drafting IP laws and establishing IP Office.

The first and second dialogues aimed to discuss with “IP Support Team”, which has been formed at the initiative of MOST to support and advise to MOST to support and advise to MOST, for the preparation of drafting IP laws and establishing IP Office, based on expert knowledge and as a representative of each organization. At second and third dialogues, discussion was made between the Japanese side and extended group consisting of IP Support team and members such as Customs and Police. (In this report, the group consisting of the IP support team and other members relating to enforcement body is referred as the “ Extended IP Support Team”).

1.4 Activities and Schedule

(1) Survey in Myanmar

The upper part shows the survey period in Myanmar by the whole delegates; the lower one, by the consultant team.

(i) 1st Survey in Myanmar (Dialogue) Whole[JICA Team, JPO Team, Consultant Team]: 6 October, 2013-12 October, 2013 Consultant Team: 6 October, 2013-10 October, 2013

(ii) 2nd Survey in Myanmar Consultant Team Only: 30 October, 2013 – 8 November, 2013

(iii) 3rd Survey in Myanmar(Seminar, Dialogue) Whole: 27 November, 2013- 9 December, 2013 Consultant Team: 27 November, 2013- 9 December, 2013

(iv) 4th Survey in Myanmar (Seminar, Dialogue) Whole: 26 January, 2014- 7 February, 2014 Consultant Team: 26 January, 2014- 7 February 7, 2014

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(2) On-site Survey in ASEAN Countries Indonesia Survey: 17 January, 2014, 18 February, 2014 Malaysia Survey: 27 January, 2014 – 29 January, 2014

October November December January February March Domestic and foreign literature search (includingASEAN countries survey) Survey in Myanmar

Survey in Neighboring Countries Reports × × × × Inception Interim Interim Final R R R1 R2

1.5 Survey Method

This survey has been conducted jointly by JICA and JPO1.

(1) Confirmation of Progress of IP four laws and Analysis of Contents We obtained the 11th draft from MOST in December 2013. From a viewpoint of emphasizing consistency with TRIPS Agreement, the legal framework (requirements, subject matters, scope, and registration system), procedure, examination, penalty provisions for infringement, etc. were analyzed by JPO Support Team. The results were conveyed to IP section for further revision of the draft and our advice and proposals were made as to the items that should be prescribed by regulations.

(2) Confirmation of Progress of IP Office Establishment and Analysis of Contents We confirmed the progress from MOST in charge of establishing IP Office. We also obtained the information from attorneys at law involving IP and UMFCCI in Myanmar. Since it is not yet determined under which ministry the IP Office will be placed, the information were collected from the organizations which were assumed to be relevant to IP and analyzed. The survey on the establishment of IP Office was conducted from a perspective of anticipated time of establishment, organizational structure (organization chart), contents of work, number and

1 See Appendix 5 for the list of delegates.

- 5 - allocation of staff, function and roles (legal policy, human resource development, SME support, science and technology research assistance, etc.).

As different tasks e.g. acceptance of applications, examination, and registration will start immediately after the laws come into force, four breakout sessions on patent, industrial design, trademark, and copyright were held and huge amount of time was spared in order to share Japanese experiences concerning business flow of respective fields by JPO Support Team.

(3) Interview with Japanese-affiliated companies Interview survey was conducted with Japanese-affiliated companies which advanced or planned to advance into Myanmar. The companies were selected from among members of Japanese Chamber of Commerce and Industry, Yangon, engaged in B2C business. We collected information on the following items in the interview- - Type of business: Type of content of business - Business situation: Business activities in Myanmar - IP Activities: Registration and/exercise of IP rights - IP system: knowledge and understanding of IP system - IP issues: concerns and issues about IP implementation

(4) Collection of Information on IP Administrative Organizations in Neighboring Countries The information was collected from the websites of IP Office of the targeted four countries. We also referred to the research reports of JPO concerning IP administration and enforcement. Regarding the information which was unavailable on the websites, we inquired local law firms and IP Office of respective countries. Fundamental information i.e. name of organization, law concerning establishment, position in the administrative organizations, IP field under jurisdiction, number of staff, budget, administrative cost, organization chart, etc. were collected and sorted out. On top of that, we summarized historical development of the organizations from the establishment to date, relationship between social situation and handling works, the function of the organizations, IP statistics (applications, registrations, etc.), state of procedure and examination, issues and challenges, etc. The survey items in neighboring countries were selected after reviewing what would be useful for Myanmar based on the results of the 1st and 2nd dialogues and thereafter the interview survey was conducted. For instance, the size and performance of IP Office at the time of establishment and the ensuing development, enforcement structure and its achievement & outcomes, and inter-ministerial committees and organizations collaborated among respective government organs were surveyed.

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1.6 Survey Itinerary

The following is the survey itinerary.

(1) 1st Survey in Myanmar Whole[JICA Team, JPO Team, Consultant Team]: 6 October, 2013- 12 October, 2013 Consultant Team: 6 October, 2013- 10 October, 2013

Date Place Program Stay 6 October Leave Japan Yangon 7 October Courtesy Call to MOST, Dialogue 8 October Dialogue Nay Pyi 9 October Nay Pyi Taw Dialogue Taw (Consultant Team: Leave Nay Pyi Taw) 10 October Dialogue, Wrap-up Yangon 11 October Yangon Japanese Companies, Japanese Embassy, JICA Office In flight 12 October Arrive

in Japan

(2) 2nd Survey in Myanmar Consultant Team Only: 30 October, 2013 – 8 November, 2013

Date Place Program/Interviewees Stay 30 October Leave Japan Yangon 31 October Yangon JICA Office, UMFCCI, Law Firm 1 November Yangon University 2 November Nay Pyi Taw Writing a report Nay Pyi 3 November Writing a report Taw 4 November MOST 5 November Ministry of Information, Min. of Industry 6 November Min. of Communication and IT, Min. of Commerce, Mini. Of Home Affairs 7 November Yangon JICA Office In flight 8 November Arrive in Japan

(3) 3rd Survey in Myanmar Whole: 27 November, 2013- 9 December, 2013 Consultant Team: 27 November, 2013- 9 December, 2013

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Date Place Program Stay 27 November Leave Japan (Only Consultant Team) Yangon 28 November Yangon Japanese Company, JICA Office, Japanese Embassy 29 November Nay Pyi Taw MOST Nay Pyi 30 November Writing a report Taw 31 December (JICA and JPO Support Team: Leave Japan) 1 December Nay Pyi Taw Courtesy Call to MOST, Dialogue with IP Section 2 December Dialogue with Extended IP Support Team 3 December Dialogue with IP Section: Parallel Session 4 December Dialogue with IP Section: Parallel Session Yangon 5 December Yangon Japanese Company, Japanese Embassy, JICA Office 6 December Workshop ( IP Awareness ) 7 December Leave In flight Yangon 8 December Arrive in Japan

(4) 4th Survey in Myanmar Whole: 26 January, 2014- 7 February, 2014 Consultant Team: 26 January, 2014- 7 February, 2014

Program Stay Date Place JICA and JPO Support Consultant Team Team 26 January Leave Japan Yangon 27 January Nay Pyi Taw Courtesy Call to (Yangon)Japanese Nay Pyi MOST, Dialogue Companies Taw 28 January Dialogue (Yangon)Japanese (Yangon) Companies 29 January Dialogue with IP Section 30 January Dialogue with Extended IP Support Team Yangon 31 January Yangon JICA Office etc. (Nay Pyi Taw)MOST (Nay Pyi Taw) 1 February Nay Pyi Taw Arrive in Japan Preparation for Nay Pyi Seminar Taw 2 February Preparation for Seminar 3 February IP Awareness Seminar 4 February IP Awareness Seminar 5 February Mandalay Workshop Mandalay ( IP Awareness) 6 February Yangon JICA Office In flight 7 February Arrive in Japan

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Chapter II Current Status of Intellectual Property Law System

Chapter II: Current Status of Intellectual Property Law System

From the survey of ministries, university, business association and attorneys at law in Myanmar, we have found the following outcomes-

2.1 Current Status of Intellectual Property Law System

2.1.1 Overview of Intellectual Property Law System

Myanmar has participated in World Intellectual Property Organization (WIPO) in 2001, and has also been a member of WTO since 1995 and has a duty to implement TRIPS Agreement. Myanmar had to implement TRIPS Agreement by 1 July, 2013, however, WTO decided to extend the deadline until 1 July, 2021.

Although Myanmar has started to establish IP laws to implement TRIPS Agreement, systematic and modern IP laws have not been enacted so far. The Myanmar Copyright Act, which came into forth in 1914, is the only of the codified IP law in the country.

There are no laws regarding trademark, patent and industrial design (regarding patent and industrial design, the Myanmar Patents and Designs (Emergency Provisions) Act 1946 was enacted but never brought into force). Trademark, patent and industrial design are registrable under the Registration Act 1908; however, no law provides for the procedures and effects relating to such registrations. In addition, the registrations is not conclusive for emergence of the rights, but may be mere prima-facie evidence regarding the of the rights. Under the current IP system in Myanmar, trademark, patent and industrial design may be protected under the common law, or respective provisions provided in certain laws, such as the Specific Relief Act 1877, and Penal Code 1860. The provisions of the Copyright Act 1914 are out of place in the modern age due to the lack of amendments in accordance with the changes in the times.

2.1.2 Trademark Law

2.1.2.1 Absence of Trademark Law

No specific trademark law has been enacted in Myanmar. Trademark protection, however, is generally recognized under the rule of common law, and it First-to-use system is appreciated as the basic principle of trademark protection. Although the Registration Act 1908 is originally intended to handle registration of deeds for land, Article 18 provides for Documents for which registration is optional. Registration Direction 13 of the Inspector General of Registration

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2.1.2.2 Trademark Protection under the Registration Act 1908

2.1.2.2.1 Overview of Trademark Registration

As stated above, trademark right may be granted by the fact of first use under the rule of common law. A mark is registrable in the Office of Registrar of Deeds and Assurances under the Ministry of Agriculture and Irrigation Settlement and Land Records Department by submitting a declaration of ownership of the mark under Article 18(f) of the Registration Act 1908 and Registration Direction 13 of the Inspector General of Registration.

Nevertheless, a trademark registration is not a prerequisite for trademark protection, and it is not conclusive for ownership of trademark right. As stated above, trademark right is granted by the first use of the mark. A trademark registration, however, is available in seeking for trademark protection under the rule of common law, and may constitute prima-facie evidence for the ownership of trademark right in a civil and criminal procedure against an infringer.

Governmental Authorities do not publish official gazette for trademark registration under the Registration Act 1908. Therefore, it is the common practice in Myanmar that the registrant him/herself places a publication of cautionary notice in a local newspaper. The notice would contain the specimen of the trademark, name and address of trademark owner as well as a short warning against . Although the notice in local newspaper is not the statutory requirement, it would constitute strong evidence for use of the mark. Therefore, the newspaper notice is an indispensable and useful procedure in the current trademark practice in Myanmar.

No law provides for the terms of trademark registration; once a mark is registered, the registration becomes perpetual and there is no need for renewal. It is common practice in Myanmar, however, that the registrant repeats the newspaper notice (stated above) every few years and notify his/her trademark to the public.

2.1.2.2.2 Procedure for Trademark Registration

As stated above, a mark is registrable in the Office of Registrar of Deeds and Assurances under the Ministry of Agriculture and Irrigation Settlement and Land Records Department by submitting a declaration of ownership of the mark under Article 18(f) of the Registration Act 1908 and Registration Direction 13 of the Inspector General of Registration. The procedure of trademark registration is shared below:

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Flow Chart of Trademark Registration

(i) Submission of a declaration of ownership of a mark to the Office of Registrar of Deeds and Assurances under the Ministry of Agriculture and Irrigation Settlement and Land Records Department ↓ (ii) Granting of Registration Number, Filing Date and Registration Date ↓ (iii) Retuning the application document with official seal to the applicant ↓ (iv) Publication of a cautionary notice in a local newspaper

Upon trademark application, the following are required: (i) a power of attorney with the applicant’s signature (in case of a foreign applicant, the power of attorney has to be notarized and also be authenticated by the respective embassy, consulate or representative authorities of Myanmar); (ii) a declaration of ownership of a mark with the applicant’s signature; (iii) a copy of previous declarations of trademark ownership in Myanmar (if any); and (iv) the other documents which indicates the name, address and nationality of the applicant, goods and/or services covered by the mark, six precise specimens of the applied mark, and certified pronunciation or translation if the mark contains words other than English. The application documents have to be prepared in English. (No need to translate in the local language). They must be submitted within four months after the signature to a declaration of ownership of a mark. A foreign applicant can file a trademark application through an agent who resides in Myanmar.

Since Myanmar has applied first-to-use system, the first user of the mark who started to use it in connection with the sales of his/her goods has the right to file trademark application; however, in Myanmar, no law provides for examination procedure. Also, there is no examination system in the Office of Registrar of Deeds and Assurances under the Ministry of Agriculture and Irrigation Settlement and Land Records Department. A third party, who objects to a trademark registration, may claim cancellation of the registration in the courts. The registration may be invalidated with order of cancellation granted by the courts.

Although no law stipulates the procedure for change of the owner on record, a trademark right is transferable. In case there are any material changes in name or address of the trademark owner, covered goods or services relating to the registered mark, it used to be registered afresh.

The following table shows the number of applications and registrations during the period 2005 to 2013 (up to September). The numbers are same, indicating that the applications are not being audited. The comparison between the domestic and foreign application and registration

- 13 - indicates that the number of foreign applications have rapidly increased since 2011. Domestic registration in 2011 was 64%, while it was 52% in 2013 (up to September).

Trademark Application and Registration: 2005-2013 Application Registration Year Domestic Foreign Total Domestic Foreign Total 2005 2446 1330 3776 2446 1330 3776 2006 2637 1518 4155 2637 1518 4155 2007 1747 906 2653 1747 906 2653 2008 2857 1796 4653 2857 1796 4653 2009 3961 1931 5892 3961 1931 5892 2010 3821 2149 5970 3821 2149 5970 2011 4007 2378 6385 4007 2378 6385 2012 4422 4068 8490 4422 4068 8490 2013 2893 2189 5082 2893 2189 5082

2.1.2.3 Trademark Protection under the Respective Laws

As stated above, there is no trademark law in effect in Myanmar. The Registration Act 1908 provides for isolated ground for trademark registration, and does not stipulate the details of trademark protection. The laws referred below provide for dispersive trademark protection-

2.1.2.3.1 Trademark Protection under the Specific Relief Act 1877

The Specific Relief Act 1877 provides for civil remedies greater than damages in case of trademark infringement. Under section 54 of the Act, injunctive relief may be granted against a trademark infringer.

2.1.2.3.2 Trademark Protection under the Penal Code1860

Section 478 of Penal Code 1860 provides that “A mark used for denoting that goods are the manufacture or merchandise of a particular person is called a trademark”, and Section 480 states that “whoever marks any goods or any case, package or other receptacle containing goods, or uses any case, package or other receptacle with any mark thereon, in a manner reasonably calculated to cause it to be believed that the goods so marked, or any goods contained in any such receptacle so marked, are the manufacture or merchandise of a person whose manufacture or merchandise they are not, is said to use a false trade mark”. Whoever uses any false mark shall be punished with imprisonment of up to one year, or with fine, or with both (Section 482).

- 14 -

Whoever counterfeits any trademark used by any other person shall be punished with imprisonment of up to two years, or with fine, or with both (Section 483). Whoever counterfeits any property mark used by a public servant shall be punished with imprisonment of up to three years, or with fine, or with both (section 484). In addition, whoever makes or has in his possession any instrument for the purpose of counterfeiting a trade mark shall be punished with imprisonment of up to three years, or with fine, or with both (Section 485). Furthermore, whoever sells, or exposes, or has in possession for sale or any purpose of trade or manufacture, any goods or things with a counterfeit trade mark affixed to or impressed upon the same or to or upon any case, package or other receptacle in which such goods are contained, shall be punished with imprisonment of up to one year, or with fine, or with both (Section 486). Whoever makes any false mark upon any case, package or other receptacle containing goods, in a manner reasonably calculated to cause any public servant or any other person to believe that such receptacle contains goods which it does not contain, or that it does not contain goods which it does contain, or that the goods contained in such receptacle are of a nature or quality different from the real nature or quality thereof, shall, unless he proves that he acted without intent to defraud, be punished with imprisonment of up to three years, or with fine, or with both (Section 487).

As stated above, the Penal Code 1860 stipulates to protect trademark with providing criminal punishments against trademark infringement.

2.1.2.3.3 Trademark Protection under the Merchandise Marks Act 1889

The Merchandise Marks Act 1889 is a supplement to the Penal Code 1860 with respect to forfeiture of infringing goods and a statute of limitation on criminal action against trademark infringer.

Section 9 of the Merchandise Marks Act 1889 deals with forfeiture of infringing goods. It states that the court may forfeit the infringing goods in the case that the accused infringer is charged with the crimes of sections 482, 486, 487 or 488 etc. of the Penal Code 1860. The infringing goods are subject to forfeiture not only in the case that the accused is convicted but also when he/she is acquitted with the proof that he/she had no reason to suspect the genuineness of the mark at the time of committing infringing activities by taking all reasonable precautions against committing such infringing activities.

Section 15 of Merchandise Marks Act 1889 prescribes the provision on period of limitation on criminal action against trademark infringement. It provides that no prosecution shall be commenced after the expiry of three years after the commission of the offence, or one year

- 15 - after the first discovery thereof by the prosecutor, whichever first happens.

2.1.2.3.4 Trademark Protection under the Sea Customs Act 1878

Article 18(d) of the Sea Customs Act 1878 prohibits export or import by land or sea of goods containing a counterfeit trademark under the Penal Code 1860 or a false trademark under the Merchandise Marks Act 1889. Article 167(8) of the Sea Customs Act 1878 also provides that such goods are subject to confiscation, and person who are related to such export or import may be punished with fine up to three times the value of the goods or up to 1,000 Kyat.

2.1.2.3.5 Trademark Protection under the Control of Money Laundering Law 2002

Article 23 of the Control of Money Laundering Law provides that whoever converts, transfers, conceals, obliterates or disguises money and property obtained by committing any offence contained in Article 5 of the Law may be punished with imprisonment of up to ten years. Since the Notification No.13/2007 relating to the Law stipulates that the infringement of trademark is a money laundering offence, the transfer of money obtained by trademark infringement may constitute violation of Control of Money Laundering Law.

2.1.3 Patent Law

In Myanmar, the Myanmar Patents and Designs（Emergency Provisions）Act 1946 was enacted in the past as relevant law on patent and design. However, this Act has not been effected at all. After enactment, this Act was repealed in 1993 by the Law for the (Second Time) Repeal of Laws 1993 enacted by the State Law and Order Restoration Council under the military government. The Law for the (Second Time) Repeal of Laws 1993 was drafted to repeal laws which are not consistent with present circumstances or have not been effected for a long time, and as a result of this Law, the Myanmar Patents and Designs (Emergency Provisions) Act 1946 was repealed.

Therefore, there is no substantive law which is effective and applicable to patent and industrial design till date. On the other hand, there is registration system to register patent and industrial design. Specifically, according to section 18 (f) of the Registration Act 1908 and Registration Direction 13 of the Inspector General of Registration, within land registration office, it is possible to register patent and industrial design by submitting declaration as owner to the Office of Registrar of Deeds and Assurances under the Ministry of Agriculture and Irrigation Settlement and Land Records Department.

In case that patent and/or industrial design is registered, in practice, registrant publishes its patent and/or industrial design in daily newspaper etc. on periodic basis (e.g. in every few

- 16 - years) in order to notify the public of the ownership of such patent and/or industrial design. By doing such publication, the registrant/owner may notify such patent and industrial design and then obtain the effect to prevent third parties from using such patent and industrial design without authorization.

The registration procedure with regard to declaration of ownership is summarised as follows. Those who try to register should submit (i) documents to describe name of patent/industrial design, name and address of owner, specification of patent/industrial design etc. according to format set by the Inspector General of Registration within land registration office, and (ii) declaration of ownership (with power of attorney, if necessary). After submission, the Inspector General of Registration within land registration office put onto the declaration of ownership the registration number as well as the date of application and the date of registration.

Although there is no official statistics of number of declarations of ownership with regard to patent and industrial design, it is estimated that there are about fifty (50) to two hundred (200) declarations made per year with regard to patent, and about ten (10) declarations made per year with regard to industrial design.

Although there is no actual case decisions, registrant may seek remedy against infringer based on section 54 of the Specific Relief Act like trademark, in case that infringer uses registered patent and/industrial design without authorization.

Although this is not directly relevant to patent itself, the Science and Technology Development Law 1994 was enacted with regard to registration of technology transfer agreement including patent. According to this law, in case that technology involving manufacturing process is transferred, such technology transfer agreement is required to be registered. Also, this law stipulates that only registrant of technology transfer agreement may file a lawsuit with regard to such agreement.

Although this is not directly relevant patent itself too, section 2 (2) (e) of the Merchandise Marks Act 1889 sets forth that “trade description” means description with regard to goods being the subject of any existing patent. Therefore, in case that one put false trade description with regard to patent, the Merchandise Marks Act 1889 is applied and sanction under the law may be imposed.

2.1.4 Industrial Design Law

With regard to industrial design, relevant laws and systems are already explained in 2.1.3. In summary, as to industrial design, Myanmar Patents and Designs (Emergency Provisions) Act 1946 was enacted and thereafter that was repealed by Law for the (Second Time) Repeal of

- 17 -

Laws 1993. Also, according to the Registration Act 1908 and Registration Direction 13 of the Inspector General of Registration, it is possible to register industrial design by submitting declaration as owner to the Office of Registrar of Deeds and Assurances under the Ministry of Agriculture and Irrigation Settlement and Land Records Department. When one registers industrial design, in practice, registrant publishes its industrial design in daily newspaper etc. on periodic basis (e.g. in every few years) in order to notify the public of the ownership of such industrial design. By doing such publication, the registrant/owner may notify such industrial design and then obtain the effect to prevent third parties from using such industrial design without authorization. Although there is no actual case decisions, registrant may seek remedy against infringer based on section 54 of the Specific Relief Act like trademark, in case that infringer uses registered industrial design without authorization.

2.1.5 Copyright Law

The present Copyright Law enacted in 1914 (the Copyright Law 1914) is the only codified IP law in Myanmar. Copyright Law 1914 is an amendment to the Copyright Law enacted in 1911 (the Copyright Law 1911).

Article 1(1) of the Copyright Law 1911 specifies that original literary, dramatic, music and artistic works are protectable under the Law. Article 35(1) provides “literary work” includes maps, charts, plans, tables, and compilations; “dramatic work” includes any piece for recitation, choreographic work or entertainment in dumb show, the scenic arrangement or acting form of which is fixed in writing or otherwise, and any cinematograph production where the arrangement or acting form or the combination of incidents represented give the work an original character; and “artistic work” includes works of painting, drawing, sculpture and artistic craftsmanship, and architectural works of art and engravings and photographs.

Copyright protection is available if- (a) in the case of a published work, the work was first published within the Union of Myanmar; and (b) in the case of an unpublished work, the author was at the time of the making of the work a citizen of the Union or within the Union of Myanmar (Article 1(1) of the Copyright Law 1914). The Copyright Act 1911 does not mention anything regarding the protection of foreign works.

There is no need for copyright registration to obtain copyright protection; copyright protection occurs automatically. No registration facilities for copyright have been established in Myanmar. The term of copyright protection is life of the author and 50 years after his/her death. Copyright Law 1914 contains no provision as to author’s moral right.

- 18 -

2.1.5.1 Remedies against Copyright Infringement under the Copyright Law

Section 6 of the Copyright Law 1911 provides that a copyright holder may seek for damages and injunctive relief against an infringer (Paragraph 1). Also, section 6, Paragraph 2 of the Law states that the costs of all parties in any proceedings in respect of the infringement of copyright shall be in the absolute discretion of the Court. Furthermore, all infringing copies of any work and all plates used or intended to be used for production of such infringing copies shall be deemed to be the proprieties of the owner of the copyright, who accordingly may take proceedings recovery of the possession thereof or in respect of the conversion thereof (Article 7 of Copyright Law 1911). An action in respect of infringement of copyright shall not be commenced after the expiry of three years after the infringement (section 10 of the Copyright Law 1911).

The Copyright Law 1914 provides for criminal punishments against copyright infringement. Section 7 of the Law stipulates that any person knowingly commits the following offence shall be punishable with fine which may extend to twenty rupees for every copy dealt with in contravention of this section, but not exceeding five hundred rupees in respect of the same transaction:

(a) makes for sale or hire any infringing copy of a work in which copyright subsists; (b) sells or lets for hire, or by way of trade exposes or offers for sale, hire, any infringing copy of any such work; (c) distributes infringing copies of any such work, either for the purposes of trade or to such an extent as to affect prejudicially the owner of the copyright; (d) by way of trade exhibits in public any infringing copy of any such work; or (e) Imports for sale or hire into the Union of Burma any infringing copy of any such work.

Section 8 of the Law provides that any person knowingly makes, or has in his possession, any plate for the purpose of making infringing copies of any work in which copy right subsists, or knowingly and for his private profit causes any such work to be performed in public without the consent of the owner of the copyright, he shall be punishable with fine which may extend to five hundred rupees.

If any person, after having been previously convicted of an offence punishable under section 7 or section 8, is subsequently convicted of an offence punishable under either of these sections, he shall be punishable with simple imprisonment up to one month, or with fine up to one thousand rupees, or with both (Section 9 of the Copyright Law 1914).

The Court may, whether the alleged offender is convicted or not, order that all copies of the work or all plates in the possession of the alleged offender, which appear to it to be

- 19 -

infringing copies, or plates for the purpose of making infringing copies, be destroyed or delivered up to the owner of the copyright (Section 10(1) of the Copyright Law 1914).

As seen in the above, the criminal punishments provided in the Copyright Law 1914 are basically limited to fine. No amendment of the Copyright Law 1914 has made to follow up the current situation.

2.1.5.2 Copyright Protection under the Specific Relief Act 1877

Like the trademark infringement cases, a copyright holder may seek for injunctive relief against an infringer under section 54 of the Specific Relief Act 1877.

2.1.5.3 Copyright Protection under the Television and Video Law 1996

Section 32(b) of the Television and Video Law, provides that whoever commits copying, distributing, hiring or exhibiting the video tape that has no video censor certificate shall be punished with imprisonment of up to 3 years or with fine up to 100,000 Kyat, or with both. In addition, the property which relates directly to the offence shall also be confiscated (The second sentence of main clause of section 32). Whoever commits copying, distributing, hiring or exhibiting for commercial purpose a video tape, without permission of the license holder of video production business or video tape distribution business shall be punished with imprisonment of up to 3 years or with fine up to 100,000 Kyat or with both (Section 33(b)).

Although Television and Video Law does not intend to provide copyright protection directly, it is understood that the Act would be available as a measure against pirated videos.

2.1.5.4 Copyright Protection under Motion Picture Law 1996

Under Article 33 of Motion Picture Law, whoever commits (a) carrying on any type of motion picture business without the Motion Picture Business License or (b) exhibiting a motion picture film without the Motion Picture Censor Certificate, shall be punished with imprisonment of up to 1 year or a fine up to 100,000 Kyat or with both and in the case of a continuing offence, be punished with a further fine of 1,000 Kyat for each day during which the offence continues. In addition, the exhibitions which relate directly to such offence shall be liable to confiscation. Furthermore, whoever carries out exhibition of motion picture without the Cinema Hall License shall be punished with imprisonment of up to 6 months or a fine up to 50,000 Kyat or with both and in the case of a continuing offence, be punished with a further fine of 500 Kyat for each day during which the offence continues (Section 34).

Although Motion Picture Law does not directly protect copyright, it may contribute on

- 20 - protection of motion picture copyright by prohibiting unauthorized screening of motion pictures.

2.1.5.5 Copyright Protection under Control of Money Laundering Law

As stated in 2.1.2.3.5, section 23 of Control of Money Laundering Law provides that whoever converts, transfers, conceals, obliterates or disguises money and property obtained by committing any offence contained in Article 5 of the Law may be punished with imprisonment of up to ten years. Since the Notification No.13/2007 regarding the Law stipulates infringement of copyright is the money laundering offence, the transfer of money obtained by copyright infringement may constitute violation of Control of Money Laundering Law.

- 21 -

Chapter III Concerned Ministries for Intellectual Property

Chapter III: Concerned Ministries for Intellectual Property

3.1 Survey Target

The survey was conducted targeting the governmental organizations related to IP1. Interview outcomes and opinions of interviewees are illustrated below.

3.2 Ministry of Information

(1) Overview Ministry of Information has the following five departments- ・Myanmar Television and Radio Department (MTRD) ・Information and Public Relations Department (IPRD) ・Printing and Publishing Enterprise (PPE) ・News and Periodicals Enterprise (NPE) ・Motion Picture Enterprise (MPE)

“Registration and Scrutiny Department” in charge of registration of publications and publishing companies under the “Information and Public Relations Department” was renamed as “Copyright Registration Department” on 1 January, 2013. The matters administered by Ministry of Information will be the areas handled by the above-mentioned departments while photograph, painting, sculpture, etc. will be under the jurisdiction of Ministry of Culture. Ministry of Information is very interested in copyright, and officials from the Ministry attended the meetings and others conducted by MOST.

(2) Registration System In Myanmar, printing and publication require registration. This registration is not for copyright but for magazines and publications and is required to be made once in a year. It is provided by the Printing and Publishing Enterprise Law, which was revised in 2013. There are approximately 300 registrations only for magazines. The revised Law imposes a fine of (maximum amount of 300,000 Kyat (US$308)) to a dealer who failed to make registration2.

(3) Countermeasure against Infringement Mainly each industry has so far coped with infringements. For example, an industry association requests police to control infringements. In case of motion picture industry, especially, “Myanmar Motion Picture Enterprises” which is a subordinate organization of the Ministry of Information controls infringements frequently with police. They not only control infringing

1 See Appendix 5 for interviewees of concerned ministries. 2 The maximum amount of fine was 10 million Kyat (US$11,621) in the draft, but it was reduced to 300,000 Kyat in order to protect local printing companies.

- 25 - goods in the market but they may sometimes arrest the manufacturers. On the other hand, Myanmar Printers and Publishers Association (MPPA) does not have controlling power like the motion picture industry, they consider, in principle, that infringement cases shall be handled by the parties, and they sometimes compensate for an infringement if a claim is filed against MPAA.

(4) Concerning IP laws and IP Office (Opinions of interviewees) The Ministry has a strong interest in IP laws (especially, copyright) and it considers it necessary to enact a new Copyright Law. After the Copyright Law comes into force, the Ministry continues their ongoing registration system. In order for IP laws to better function, an umbrella system and central control unit is required and cooperation among the relevant government organizations is essential.

3.3 Ministry of Industry

(1) Overview The Ministry of Industry had been divided into Ministry of Industry I and Ministry of Industry II, but they were integrated in 2011. At present there are the following six industrial sectors- ・Heavy Industry (Automobile, etc.) ・Heavy Industry (Tyre Industry, etc.) ・Heavy Industry (Cement Industry, etc.) ・Textile and Garment Industry ・Paper and Home Utility Industry ・Pharmaceutical and Food Industry Ministry of Industry has not participated in the IP related meetings held by MOST so far. However, the Ministry is aggressively involved with joint ventures and PPP (Public Private Partnership) with foreign corporations for promoting technology transfer from overseas in relation to FDI. Although having said that, most of FDIs are mainly related to assembly, and thus are considered to have nothing to do with IPR.

(2) Small and Medium sized Enterprise (SME) The Ministry of Industry established “SME Development Center” in Yangon in 2011. It supports government-affiliated and private SMEs and implements trainings through financial assistance of SME Development Bank (Joint Venture of government-affiliated and private companies). The trainings by foreign partner companies are also conducted. It has six industrial training centers (by HRD (Human Resource Development) Department), organize trainings by recruiting around 1,200 trainees periodically, and award the certificates. These trainings mainly target those who are graduated from high schools and are unemployed. For example, German,

- 26 -

South Korean, Chinese, and Indian companies are providing technical support. The contents of trainings include maintenance of automobiles and operation of machinery, etc.

(3) IP and Industry (Opinions of interviewees) Although they promote technology transfer from overseas at present, they consider it necessary to produce technology on their own in the future. However, no activities for that end are conducted due to the limitation of budget. They consider the selection of kind of education system as one of their challenges. Though this is not an official comment of the government, they recognize the following four sectors as important to be developed. ・Agro-based industry：Value-added production of food processing, etc. ・CMP(Cutting Making Packing)：Textile & Apparel industry ・Gem and Jewelry：Gemstone processing industry ・Automobile：Domestic automobile industry In order to develop the above-mentioned industries, technology transfer from overseas is essential, and for that purpose it is a key to disseminate IP system. They are interested in IP system and desire to cooperate with MOST in the fields of education and training as they consider IP laws as important for Myanmar. The Ministry believes IP regime will be significant in the field of pharmaceutical, in particular.

3.4 Ministry of Communication and Information Technology

(1) Overview The Ministry of Communication and Information Technology has the following two departments- ・Posts and Telecommunications Department (PTD), which administers laws and regulations, PTD is in charge of IP in cyberspace. ・Myanmar Posts and Telecommunications Department (MPTD), which administers services regarding telecommunications.

As a law concerning communication, “Electric Transaction Law” was enforced in 2004, but it is still under review at the moment. Since it relates to electronic commerce (content commerce), it is anticipated that copyright will be included. Other kinds of crimes are also found in the electronic commerce, they are under the jurisdiction of PTD. As a new law in the field of communication, “Telecommunication Law” was enacted on 8 October, 2013. This promotes FDI in mobile communication sector. So far only government was allowed to enter the business in the communication sector, but this law enabled private sector (including foreign companies) to enter into the market. The purpose of this law is to regulate communication operator service (mobile telecommunication service). In Myanmar, there are three such operators, two are foreign enterprises and the remaining one is a government-affiliated company. The operator

- 27 - service includes internet service as well. The fee for internet service is under the jurisdiction of PTD. They do not regulate the amount of fee, but monitor whether fair competition is in practice or not.

(2) IP in the field of Communication Myanmar has a law to regulate internet service providers, but does not have a law3 to regulate contents providers. At present contents business in the internet and mobile environment is underdeveloped, and the rate of prevalence of mobile phone is around 5–10%, so it is not a situation where issues on the internet have become remarkable.

3.5 Ministry of Commerce

(1) Overview Ministry of Commerce has the following three departments. ・Directorate of Trade, which is in charge of WTO, ASEAN and regional trade agreements, and trade related affairs. ・Department of Commerce and Consumer Affairs, which administers consumer protection, competition, flow of trade, import/export licenses, etc. ・Department of Trade Promotion, which administers domestic and overseas trade promotion related affairs

(2) IP and others (Opinions of interviewees) Myanmar acceded to WTO in 1994, thus she has to comply with TRIPS Agreement. Since the Ministry of Commerce originally handles trademark, they recognize their responsibility for developing trademark system. Although they join the meetings of MOST, they have never discussed how to handle trademark in IP laws specifically with MOST or other ministries. The Ministry has its own idea on trademark registration under the IP system, and they would like to examine how to handle trademark through discussing with MOST for the future (The registration of trademark, however, is now made by Ministry of Agriculture and Irrigation, and there is none in Ministry of Commerce who knows trademark registration very well). Since the Ministry considers that the trademark is under the scope of their mandate, they want to support MOST based on this perspective. Ministry of Commerce doesn’t have a department specialized in trademark, but some staff had trainings on TRIPS Agreement and others, thus they have basic knowledge on IP.

3 For example, Japan has Act on the Limitation of Liability for Damages of Specified Telecommunications Service Providers and the Right to Demand Disclosure of Identification Information of the Senders (Act No. 137 of 30 November, 2001, Enforced 27 May, 2002) (so called "Provider Liability Limitation Law").

- 28 -

In order to better function IP system in Myanmar, the key issues i.e. who will take the initiative and will perform the functions like Central Control Board should be ascertained.

(3) Enforcement (Opinions of interviewees) There is a “Consumer Affairs Division” that assumes enforcement in Ministry of Commerce. The division is in charge of product safety, consumer education, etc. Enforcement by Ministry of Commerce is made from a viewpoint of controlling “unsafe products” (products that fall short of safety standards) rather than controlling IP infringement. The control of trademark infringing goods is not conducted independently by the Ministry of Commerce, but is handled by the Ministry of Commerce as a window in cooperation with the Sea Customs.

3.6 Ministry of Home Affairs

(1) Overview Ministry of Home Affairs has the following nine departments. *mark indicates the department relevant to IP particularly. ・National Intelligence Bureau ＊ ・Central Committee for Home Affairs ＊ ・Central Committee for Drug Abuse Control ・Myanmar Passport issuing Board ・Visa Issuing Board ・Central Registration Board for Printer and Publishers ・Committee for Restriction of Transfer Immovable Property ・Preliminary Scrutiny Committee for Awarding Titles and Medals ・Board of Product using prison Labors Objectives

(2) State of Crime In recent times, piracy of CD is a significant economic crime in Myanmar . There are local and foreign piracies. Other economic crime is perjury of contract, etc. An example of this is that, after A and B conclude a contract with certain amount, A makes a false written contract without the consent of B. Although the number of cases is not so large, there are about 40 cases per month. They are concerned with this new kind of economic crime in line with the development of technology.

(3) Enforcement (Opinions of interviewees) It is not always the case for enforcement that the police detect the offender based on a complaint from a right holder. Generally, the police control such crimes through collaboration with business associations. Since business associations do not know how to cope with IP

- 29 - infringements, they need to work with the police. The flow starts with collaboration with business associations then collection of information on infringement and finally to intervene the market. The police also conduct raid. They prepare necessary documents and request a warrant from the court for the raid. They believe they need to collaborate not only with the police but also with other Ministries, for instance, to exchange information with Ministry of Information, Ministry of Communication and Information Technology, etc. With the aim to ensure the cyber safety, Myanmar Cyber Response Emergency Team was established. There are few cases in a year. The cybercrime requires certain work with engineers, etc. and they paid a visit to a police inspector of Kyoto Prefectural Police and exchanged opinions.

(4) Education on IP (Opinions of interviewees) The police conduct training on basic matters of IP since two years ago. Specifically, trainings on IP, computer programs, and cybercrimes are provided as “Technical Crime Session”. They also hold training on how to investigate under the name of “Investigation Body”. They hope they will get further cooperation for educating IP from JICA and other countries.

(5) Future Development (Opinions of interviewees) Myanmar may need an organization like “Market Surveillance Bureau” of Vietnam. It is effective to collaborate with the police. It is also necessary to establish a specialized department on IP in the police. They attend the meetings of MOST as to the IP laws under legislation, and plan to continue addressing the issue proactively.

- 30 -

Chapter IV Current Situation of Intellectual Property Laws and Intellectual Property Office

Chapter IV: Current Situation of Intellectual Property Laws and Intellectual Property Office

4.1 Intellectual Property Development Plan of Myanmar

(1) Objective Myanmar has been a member nation since the time of GATT and became a member of WTO on 1 January, 1995. Although the TRIPS Agreement became effective in 1995, the obligation was effected for developing countries after 1 January, 2000 (after 2006 for least-developed countries with very low income ). Against such a backdrop, the IP system and legislation of Myanmar has been developed with the support of WIPO since August 18, 2004 in order to fulfill the obligation of TRIPS Agreement.

(2) Enactment of IP laws The TRIPS Agreement comprehensively covers IPRs such as patent, industrial design, trademark, copyright, , layout design of integrated circuit, etc. This Agreement provides for the procedures for enforcement of rights and dispute settlement in addition to ensuring the minimum standard for protection of these IPRs. The IP laws of Myanmar have to comply with the TRIPS Agreement.

In order to fulfill the obligations, MOST has been playing the central role for drafting the IP four laws (patent, industrial design, trademark, and copyright), and has been proceeding the task with the support from WIPO and JPO. The 11th draft laws have been drafted as of February 2014. Upon completion of the draft laws, they will be sent to the Union Attorney General's Office and then to Presidential Office, Cabinet and Parliament to be scrutinized, aiming for the enactment within this fiscal year. Meanwhile, the MOST strives for establishment of the IP four laws at the same time.

(3) Establishment of IP Office The IPs, especially patent and industrial design, are established as the right which can be exclusively exercised (utilized) for certain period by filing an application and being registered at IP office (JPO). Therefore, Myanmar needs to establish the IP office. At present, MOST mainly prepares for setting up IP Office, but it is the Parliament that will decide the positioning of IP Office as a government organization and the ministry which will have the jurisdiction over IP Office. It is considered to establish IP Office in three places of Nay Pyi Taw, Yangon and Mandalay. Regarding the development of IT infrastructure, the introduction of WIPO-IPAS is examined through the assistance of WIPO. The organizational development is considered bearing in mind that many trademark applications are expected to be filed.

- 33 -

(4) Future Plan In addition to the enactment of IP laws, it is urgently required to develop the detailed regulations (e.g. rules and guidelines) which are directly relevant with the work. The coordination with relevant government organizations are also under review.

It is also important to train and educate the officials involving the IP system (including the training of examiners). Although some officials, mainly of MOST, have attended seminars with the cooperation of WIPO and others, and visited the IP offices of other countries for observation and practical experience, the absolute number of the officials specialized in IP is limited.

The IP four laws currently under consideration are introduced here. Since the draft has been amended and changed frequently, the overview of each law is introduced here. The analysis of the draft in this project was made by JPO Support Team.

4.1.1 Patent Law

(i) Person entitled to be granted a patent An inventor or his or her successor in title has the right to the patent. As for joint inventions, it is provided that an application shall be filed jointly. With respect to inventions by employees, it is stipulated that the employee shall have the right to receive the remuneration based on the profit gained by working the said invention.

(ii) Patentability Novelty, inventive step, industrial applicability, grounds for unregistrability, enablement requirement, support requirement, etc. are prescribed. It adopts a first-to-file principle.

(iii) Examination Procedure The examination principle is employed in which a substantive examination is conducted upon request for examination by an applicant or filing an objection by the third party.

(iv) Patent Right The term of patent right is 20 years from the filing date of the patent application. The effect of patent right does not extend to non-commercial private use or experimental research. And a patentee may transfer, assign and license the patent right, and may file a civil lawsuit.

(v) Others A compulsory license and a system for statement of dissatisfaction are also provided.

(vi)

- 34 -

Methods, chemical substances, etc. are excluded from the subject matters of utility model. The term of protection for utility model right is 10 years from the filing date of the utility model application.

4.1.2 Industrial Design Law

(i) Person entitled to be granted an industrial design A creator or his or her general successor has the right to register the industrial design. There are provisions regarding joint creations and creations by employees.

(ii) Requirements for Registrability It is stipulated that a part is also the subject of protection. The industrial design shall be new, independently created, and shall not be based on the technological function and the industrial design shall not be liable to contravene public order or morality. Also it adopts a first-to-file principle.

(iii) Examination Procedure After only a part of requirements (eligibility as the subject of protection, public order or morality) is examined, the industrial design is published. As for the other requirements, when an opposition is filed, the examination shall be conducted.

(iv) The term of industrial design right is 5 years from the date of the industrial design registration. It is provided that the term may be extended up to 15 years from the date of registration.

(v) Others It is possible to file a multiple application of industrial design in accordance with Locarno Classification, and there is a reference on the Hague Agreement. The Law also has provisions for filing an opposition and civil remedies (provisional injunction, compensation for damages, destruction of the articles created by the act of infringement, etc.).

4.1.3 Trademark Law

(i) Requirements for Registrability As the subjects of protection under the Trademark Law, trademark, , collective mark, , geographical indication, well-known mark, series mark, and are enumerated. There are also provisions concerning the absolute grounds for rejection (distinctiveness, copy of national flags, etc.) and the relative grounds for rejection (identical with or similar to prior applications filed by others).

- 35 -

(ii) Examination Procedure After the registrar has examined the absolute grounds for rejection, the trademark is published. As for the relative grounds for rejection, when an opposition is filed, the examination shall be conducted.

(iii) Transitional Period The adjustment clause is provided between the right holder who has the registration of mark based on the Registration Act 1908 and the applicant of trademark after the Trademark Law comes into force.

(iv) Trademark rights The term of trademark right is 10 years from the date of the trademark registration. It is provided that the term may be renewed every 10 years.

(v) Customs Control It is provided that the customs may control by issuing the suspension order and the order for delivery up, etc. in order to prohibit the import of trademark infringing goods.

(vi) Others The Draft Law refers to Protocol Relating to the Madrid Agreement.

4.1.4 Copyright Law

(i) Subject Matters The works of computer programs and database are the subject matter of protection (relevant to TRIPS Agreement). As characteristic examples, textile designs, traditional cultural expressions and folklore are included.

(ii) Copyright term The term of copyright shall begin with the creation of the work and shall continue to subsist, in principle, until the end of a period of 50 years following the death of the author.

(iii) Economic rights and The rental rights are stipulated as the right (related to TRIPS Agreement). The moral right of performers is also provided.

(iv) Ownership of Copyright It has the provision of the work for hire.

(v) Limitations to Rights

- 36 -

It provides for the limitation on reproduction of works for audio-visually impaired by Authorized Entity stipulated under the Marrakech Agreement.

(vi) Neighboring Rights The performers, phonogram producers and broadcasting organizations are stipulated as neighboring right holders.

(vii) Digital Environment In light of WIPO Internet Treaty, it prescribes for prohibiting the circumvention of technological protection measures and the modification of rights management information.

(viii) Registration of Copyright The voluntary registration system is introduced.

(ix) Copyright Collective Management Organization It provides for the authorization of Copyright Collective Management Organizations which provides the license for the use of works after the are entrusted from the copyright holders and collect the royalties.

(x) Enforcement of Rights It stipulates the civil remedies, provisional measures, and border measures as the enforcement of rights against the infringements under the Copyright Law (the 11th draft law).

4.1.5 Process of Enactment of Law

The process of enacting a law in Myanmar is as follows;

1. After the Minister approves draft laws drafted by MOST, it is sent to Union Attorney General’s Office. 2. The draft laws are revised by Union Attorney General’s Office and MOST, if necessary. 3. The draft laws are next sent to President Office and above 2. is performed. 4. The draft laws are sent to Cabinet for deliberation. 5. The draft laws are sent to Parliament for deliberation. 6. It is established as an act after President signs.

- 37 -

Flowchart of Enactment of Law

4.1.6 Position of MOST

MOST is the focal Ministry for establishing the IP Office and enacting IP four laws. Since the patent, the main IP, is related to science and technology and MOST has had contact with the WIPO from the beginning, MOST was selected. However, the Ministry which will administer IP Office officially will be determined in the process of deliberating the IP draft laws at the cabinet and the parliament (According to the 11th draft, MOST is described as the “Responsible Ministry”). At the moment, therefore, MOST is assigned to work on enacting IP four laws and establishing IP Office, and there is no system to examine “how IP system should be functioned” apart from the task of enactment and establishment of IP Office. Since this relates to several government organizations and policies, it is assumed to move forward after the enactment of IP four laws and once the establishment of IP Office is officially finalized.

4.2 Current Situation on the Establishment of Intellectual Property Office

Myanmar does not have any draft laws for establishment of the ministry that Japan has. Thus, Parliament scrutinizes IP laws has an authority to determine the IP responsible ministry.

4.2.1 Background

The Science and Technology Development Law was enacted in 1994. This law was enacted aiming at further development by properly addressing the advancement of market economy and change of the situation. The six objectives of this law are- a. to carry out development of Science and Technology for promotion of industrial production to contribute towards the National Economic Development Plans; b. to carry out Research and Development for the increased extraction and utilization of domestic raw materials and the promotion of industrial production enterprises based on modern Science and Technology;

- 38 - c. to effect Technology Transfer for the promotion of production processes and the improvement of the quality of goods; d. to nurture luminaries required for the development of Science and Technology and for Research and Development and to improve their qualifications; e. to communicate and cooperate with domestic and foreign research institutes and organizations for the development of Science and Technology and Research and Development; f. to honor and grant appropriate benefits to outstanding luminaries and inventors in the field of Science and Technology.

Under these circumstances, MOST was established in 1996. The MOST, which was set up for promoting science and technology is in charge of works relating WIPO and enactment of IP legislation, and has taken the initiative to enact the IP laws in collaboration with the Union Attorney General's Office since 18 August, 2004. Similarly, the MOST has been examining the issues relating to the establishment of IP Office.

They aim to establish the IP legal system which promotes economic development, technology invention and innovation of Myanmar and complies with the TRIPS Agreement.

4.2.2 Role and Functions of Intellectual Property Office

According to the draft of organizational structure of IP Office, the major roles of IP Office include registration of IPRs, IP education & enlightenment, formulation of IP policies & strategies (including enforcement). In order to assume these roles, it is planned to establish the following four Departments. As for the finance of IP Office, either independent funding or government support can be considered, but it’s not yet determined.

(1) IP Department IP Department assumes management and administration of IP laws. To be specific, it is in charge of accepting applications, examinations, granting rights and their renewal, recording the change of names or addresses of IP right holders, and license related work.

(2) Policy and Strategic Planning Department This Department is in charge of formulating strategic policies and directions of IP. It analyzes the impact of IP system in Myanmar, manages the strategic directions toward foreign organizations and IP offices of other countries, and strives for enhancement of the position of Myanmar in the International Conferences concerning IP.

(3) Education and Awareness Department This Department is in charge of management of IP awareness and education. It also operates the website of IP Office for providing and disseminating information and formulates a program

- 39 - for promoting IPR management and developing the system.

(4) Financial and Administration Department This Department is in charge of management of personnel, finance, and information technology. There are two options regarding sources of funding, self funding and government funding but it is still undecided. The draft organizational structure of IP Office as of 29 January, 2014 is projected below .-

The roles of Director General, the head of IP Office, and the subordinate Deputy Director General are as follows; a. Role of Director General Supervising the function of IP office as the centre of establishing IP system according to the direction and instruction of the government. b. Role of Deputy Director General Obligating Director General, supervising the function of IP office as the centre of establishing IP system according to the direction and instruction of the government.

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4.2.3 Business of Intellectual Property Office

It is planned to establish IP Office in Nay Pyi Taw at first and to be expanded later on. According to the plan, IP Office will be established in Yangon, and Mandalay in addition to Nay Pyi Taw, but it has not been determined which will be the headquarter at the moment. The applications will be accepted at the counter of IP Office and the filing by postal mail or e-mail is not considered for the time being. The information system currently under use is going to be used for information exchanges.

(i) Filing Method Only documentary filing is to be accepted. Filing by e-mail or online application is not assumed as the communication environment is not well prepared. Since it is necessary to check the deficiency of necessary documents, they consider electronic filing as inappropriate. It is planned to accept applications only at the counters. And they have a plan to open counters in three places (Yangon, Nay Pyi Taw, and Mandalay).

(ii) Filing from overseas No special provision is prescribed in relation to filing from overseas. Under the Draft Patent Law, it is provided that foreign companies shall use a local attorney. In case of the Draft Industrial Design Law, it provides for using an attorney, but it does not stipulate whether the attorney is limited to a local attorney only or whether a foreign attorney is also permitted. The Draft Trademark Law has a similar provision like the Draft Industrial Design Law. Although the Draft Industrial Design Law and the Draft Trademark Law do not prescribe whether the attorney shall be local or foreign, the respective regulations will provide that a foreign company shall use an attorney of Myanmar like the case of Draft Patent Law, according to them.

(iii) Language of application According to Draft Patent Law, an application can be filed either in Myanmar language or in English. It was not decided in which language they will conduct examinations.

(iv) Method of Publication before Examination of Application Since they do not have something like an official gazette, they said they would need it in the future.

(v) Division of Duty between HQ and Branch of IP Office At this point in time, the first office is planned to be established in Nay Pyi Taw. However, it’s not determined whether the office in Nay Pyi Taw will be the headquarters or branch. In the future the headquarters and branch offices will be established, and branch offices will only accept applications and conduct a formality examination. The substantive examinations are

- 41 - planned to be made at the headquarters and registers of applications and others will be also maintained at HQ. Additionally, the headquarters will communicate with branch offices by telephone, fax, e-mail, or postal mail. They will consider how to handle the applications of same invention filed at HQ and each branch on the same date.

(vi) How to Notify from IP Office A notification will be directly sent to an applicant. If an application is filed by an attorney or an agent, the notification will be sent to the attorney. Certificate and others will have to be received at the counter, not by mail. They plan to accept responses and others at counters. And they have a plan to open counters in three places (Yangon, Nay Pyi Taw, and Mandalay).

(vii) Fee Collection of a filing fee and a registration fee is stipulated by law, and other details such as specific amount of fees are to be determined by detailed regulations. However, the fee (specific amount) has not been examined. How to make payment has not also been considered, but since credit cards are not prevalent, they will probably collect the fees by cash.

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Chapter V Current Intellectual Property Situation

Chapter V: Current Intellectual Property Situation

5.1 Introduction

The only law dealing with IP in Myanmar is the Copyright Law, which was enacted in 1914. Infringements of IP rights have been handled under the Special Relief Act 1877, the Television and Video Law 1966, and the Penal Code, but it is clear that IP rights are not being adequately protected due to the lack of a specific framework. This is clear from the number of shows and street stalls selling infringing products along roads and in markets in Yangon and Mandalay. This chapter examines the IP situation in Myanmar with special attention on trademarks and copyrighted works.

5.1.1 Trademark

There is no trademark law in Myanmar, but there is a system for trademark registration. Under section 18(f) of the Registration Act, registration is handled by the Settlement and Land Records Department of the Ministry of Agriculture and Irrigation, and requires submission of the following documentation:

(a) Declaration of ownership of trademark - the name and complete address of trademark owner, whether individual or company - a specimen of the trademark or service mark - the list of goods to be used with the mark, and a statement that the applicant is the first to create this mark. (b) Power of attorney - The name and full address of trademark owner and the name, address and the national audit number appointed agent, signed by the trademark owner - Powers of attorney from non-resident trademark owners must be notarized by the embassy.

There is no legal limit regarding the period of validity for trademark registrations, so once registration is granted, the protection is eternal, but in general most corporations use newspaper advertisements in every few years to ensure that consumers recognize the trademark. As outlined above, trademark registration is possible, but in fact a visit to the Bogyoke Aung San Market in Yangon will show that a number of goods such as the ones shown below are offered for sale, which are probably infringing copies.

- 45 -

Probable counterfeit product of foreign shoes

Probable counterfeit product of foreign brand handbag

Probable counterfeit product of foreign brand handbag

( 3 Photos above was taken by Kyoto Comparative Law Center (KCLC) between October to December 2013)

- 46 -

(Photo taken by KCLC)

Goods such as these, thought to be counterfeit products stacked along the road as shown above for sale to passers-by. Prices are generally about one-fifth of that of an original product.

The following is another case: we can see the sign saying Japanese brand name without authorization/permission of regular distributor.

ｺﾝﾌﾟﾚｲﾝ後、この様なｻｲﾝﾎﾞｰﾄﾞに なりましたが、再度ｺﾝﾌﾟﾚｲﾝしたとこ ろ、最終的にHondaの文字は無く なっております。

弊社がｺﾝﾌﾟﾚｲﾝﾚﾀｰを出して看板を変更させた事例です。 （Photo provided by Honda Myanmar Office）

- 47 -

5.1.2 Copyright

The Copyright Law of 1914 provides protection for copyrighted works, but there is no registration system as is available for trademarks so any infringement disputes must be settled directly by the parties in dispute. Industry bodies involved in settling such disputes include the Writers Federation, the Printers and Publishing Association, the Motion Picture Federation, and the Music Federation. For infringement of videos, for example, Myanmar Motion Picture Enterprises (under the Ministry of Information) works with police in enforcement. Infringement of published work would be covered by the Printers and Publisher Association, but they do not appear to be actively enforcing copyright law. Given this situation, the market is full of infringing goods. The DVD shown below, thought to be pirated edition, is being sold in Yangon for the equivalent of about 50 yen. Music CDs are available from street stalls for several dozen yen per disc.

(Photo taken by KCLC)

The following is the business flow of publications-

(1) Flow of publication The approval of the government was required for publication. It means that publication was not allowed if the government said “No”. After the Printing and Publishing Enterprise Law was amended in 2013, however, publication has come to be made freely. Under the earlier law, if the publication was made without approval, the government was able to seize and confiscate them.

The following is the flow from creation to publication and printing.

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(2) Copyright Clearance for Publication In Myanmar, publication is decided by contract (including number of issues). The royalties are not commonly used since the number of issues is limited. Ninety percent of copyright belongs to the authors while the remaining ten percent belongs to the publishing companies. There is no copyright management organization in the field of publishing and thus copyright is managed by each individual author.

(3) Issues on Copyright The following issues are found, for instance,- (i) When poetry of a late author whose term of copyright protection has expired is published, the deceased family claims the copyright. (ii) One day suddenly the government announces in the media that what was freely copied shall not be copied, but it cannot be controlled in practice. (iii) The copied photographs of entertainers are circulated in the market. (iv) The copies of popular books that have not been published for a long time and become out-of-print are circulated in the market (novels, etc.). (v) Pharmaceutical related books and others are too expensive to be afforded and are often copied. (vi) The books on technology, construction, etc. written in English are translated into Burmese and published without authorization of right holders. This is mainly done by publishing companies (without authorization).

5.1.3 Patents and industrial designs

The Myanmar Patents and Designs Act was formulated in 1945 to cover patents and designs, but it was never enacted. In 1946, the Myanmar Patents and Designs (Emergency Provisions) Act was enacted and is still in force, but it was enacted to provide local support for Indian law pertaining to patents and designs, and it has never actually been used (the Indian Patents and Designs Law is not a law in Myanmar).

Given this situation, there is massive imitation of in Myanmar. The use of motorcycles in Yangon is regulated now, but in Mandalay, for example, the streets are full of

- 49 - perfect or partial copies. Because industrial design rights do not exist, at present industrial design rights holders register the industrial design under the Registration Act in the same way as for trademarks, and may take legal action against imitation using that registration as evidence, but this approach is has very little effect on anything other than exact copies.

Below are exact copies of Japanese motorcycles located in Myanmar. All were imported from China.

ｺﾋﾟｰ車状況 Hondaﾓﾃﾞﾙ VS ｺﾋﾟｰ車

Honda Wave Wave ｺﾋﾟｰ Honda Dream Dream ｺﾋﾟｰ

Honda Scopy Scopy ｺﾋﾟｰ Honda Click Click ｺﾋﾟｰ (Photo provided by Honda Myanmar Office)

5.2 Current Intellectual Property Situation of Company

(1) Purpose of Interview The Japanese companies penetrating Myanmar tend to increase since the government of Union of Myanmar has adopted a market opening policy and amended the Foreign Investment Law in recent years.

Meanwhile, Myanmar doesn’t have IP laws except for copyright. Under these circumstances, the government aims to enact IP laws and to establish IP Office. After these initiatives are taken, the next concern is how effectively the system will be implemented. In this backdrop, we conducted the interview about IP situation, issues, and challenges in Myanmar with the Japanese companies that have advanced or aim to advance into the market of Myanmar so that

- 50 - we can provide more practical proposals based on the actual situation to the government of Myanmar.

(2) Target of Interview There are 128 corporations (registered at the Japan Chamber of Commerce and Industry) that have tapped into Myanmar (as of 2013). From a viewpoint of understanding the situation of IPR issues in the market, main targets were not only B2C companies (business to consumer) but also B2B companies (business to business) that are engaged in infrastructure business through technology transfer in this interview survey.

Multifunction Machine/Copying Machine 1 company General Home Appliance & Infrastructure 2 companies Communications Equipment & Service 1 company Apparel 1 company Motor/two-wheel & four-wheel 2 companies

(3) Method of Interview We visited the companies subject to the interview in Yangon city and conducted a face-to-face interview. Since one of them does not have an office in Myanmar, we conducted the interview in Japan.

(4) Contents of Interview The followings are the contents of interview. -Types of business: What kind and content of business do they engage? -State of business: What business activities do they conduct in Myanmar? -Utilization of IP: Do (Did) they register IP or exercise their rights in Myanmar? -IP system, etc.: Awareness and recognition of IP system -Issues and challenges: Issues and challenges concerning operation of IP system

5.2.1 Company A

(1) Type of business: Copying machine, multifunctional machine manufacturer

(2) State of business -They do not manufacture locally. They provide sales and services through local companies. The counterfeits of toners are in the market and consumers claim of breaking a machine as a result of using counterfeit toners.

- 51 -

(3) IP system, etc. -They register their trademark in Myanmar. Although they understand basic laws and system, it’s unclear what is available and what is not because there are still many old laws. Implementation after the enactment of laws is important. They hope that the way of defining the well-known trademark will be clarified. -Since laws are reflected by society and custom of each country, it cannot be helped but to accept them even if they are different from Japan and there is a country risk. However, unless the procedure and implementation are clear enough, there is a risk from the viepoint of compliance.

(4) Issues and challenges - Implementation after the enactment of laws is not clear. In other words, even if laws are available, it’s not clear how they are implemented. -They are concerned that the vertically divided administration among Ministries and Agencies may give a negative impact on implementation of laws.

5.2.2 Company B

(1) Type of business: General Company (infrastructure, home appliance, etc.)

(2) State of business -They do not manufactured home appliances in Myanmar but are engaged in infrastructure development (energy, railway, etc.) with technology provision.

(3) IP system, etc. -They do not register trademark and others in Myanmar. They set up a joint venture with a local company and defined how to handle IPR (including technology information) in the contract. Since there is a concern as to what extent out technology information can be protected by joint venture contract, we carefully put them into black box so that the high technology will not be leaked. It is important for companies to protect technology information and (including know-how). -The laws of Myanmar are old and do not match with current situation. Very old precedents seem to have legal validity, so it’s difficult to interpret them. Rather than laws themselves, their implementation is difficult to understand as cases are handled differently from what is written in the law. -Lack of understanding of governing law in the contract (It’s often requested to designate the law of Myanmar as the governing law in the contract.) Thus, foreign corporations are placed in disadvantageous position in litigation. -Large corporations have a solid legal department, and the legal department provides legal opinions concerning contracts with foreign companies. Therefore, if legislation of partner

- 52 -

country (e.g. Myanmar) is not well developed, it is judged that there is a risk. However, this is not true in case of SMEs.

(4) Issues and challenges -Competent government officials are required in Myanmar. In particular, it is essential to enhance efficiency of vertical and horizontal bureaucracy. Now main investment goes to infrastructure, but government officials who formulate and implement a grand design and its system are needed for industrial development in the future. If Myanmar desires investment or advancement of large corporations, they need to develop a proper and transparent legal system. Education is important for improving a level of technology.

5.2.3 Company C

(1) Type of business: IT solutions, etc.

(2) State of business: IT business mainly targeting Japanese-affiliated companies, Business providing solution in accordance with needs of customers. The current business is mainly concerning network solution, but it is planned to expand to the program and network. As software package sells well in Thailand and Vietnam, it’s a matter of time that it will be in Myanmar as well. -There are no needs of data center, etc. at present, but there is a possibility that cloud environment will be developed in the future. Most of the software development at the moment are offshore type, taking a style of developing in Japan and delivering them to Myanmar.

(3) IP system, etc. -They register their trademark in Myanmar. Although it’s a trademark of other company, it is used by a private shop in Yangon. -They consider mobile-based contents industry will grow further and accordingly copyright will be significant. And also the scope of legal liability of network service providers will become a subject of discussion.

(4) Issues and challenges -Needs to examine how to protect computer program and handle copyright concerning cloud on the network. Since the future business may extend to computer program development and network in Myanmar, IP and relevant laws which deal with internet environment including Copyright Law and Provider Liability Limitation Law need to be developed.

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5.2.4 Company D

(1) Type of business: Information communication related products and services

(2) State of business: -They have an experience of BOT (build, operate and transfer) by establishing a consortium for communications infrastructure related business. They sell and provide services in the field of information communication products through an agent (100% local).

(3) IP system, etc. -It’s not clear whether their trademark is registered in Myanmer under the current system. Once the laws are established, they will file a trademark application. -They have no direct contact with IP at present, but patent and copyright will be relevant with regard to information communications equipment in the future. Main mobile services in Myanmar now are phone call and mail, but entertainment is expected to prevail in the future. On that occasion, while aggregation (service collecting and distributing contents) is not well developed, good contents need to be prepared in order to foster good aggregators, to that end, copyright protection will be indispensable. -The Telecommunication Act is mainly related to our business. It was enacted in 2013, under which foreign capitals were allowed to enter in the mobile sector, and service providers of Qatar and Norway were selected as a result of bidding, but the license has not yet been issued since the detailed regulations have not been stipulated. As you can see from this case, enactment and implementation of detailed regulations are important for enforcement of laws. The law concerning internet seems to be provided in the Telecommunication Act. It is required to be developed as soon as possible. -Enactment of IP laws is welcome, but it’s meaningless if they are not implemented. Since highly qualified legal practitioners (government & private) are limited in Myanmar, there is a concern whether the laws are properly enforced. -When they establish a production base in Myanmar, they will file a patent application. The patent filing strategy may differ depending on if the technology is new or not. Even if the technology is old, however, they will file an application if there is a business chance. -The size of domestic market of Myanmar is large, and they do not consider offshore development (Development will be made within Myanmar). Therefore, they call for appropriate protection of IP concerning relevant technology and service.

(4) Issues and challenges -A mechanism of internet security and personal information protection is required. An appropriate system of copyright protection is important to develop contents industry for mobile communications.

- 54 -

-It is important to stipulate and implement not only the laws but also the detailed regulations as soon as possible. In this sense, it is urgently needed to foster practicing IP. -Strengthening of penalties and a mechanism for smooth exercise of rights are essential for effective enforcement.

5.2.5 Company E

(1) Type of business: Apparel manufacturer

(2) State of business: -They are examining a penetration into Myanmar. Although they have not manufactured in Myanmar, the counterfeits of their products manufactured and sold in Thailand were sold in “North Point Shopping Center” of Yangon. They considered if they exercise the right, but finally did not exercise it due to their business strategy.

(3) IP system, etc. -They register their trademark in Myanmar and regularly put advertisement in the newspapers. However, since the exactly same trademark is not utilized just as the above-mentioned counterfeit case, it is difficult to file a lawsuit under the situation where Trademark Law does not exist. And if the infringer is largely organized and has a strong power in Myanmar, the possibility of becoming disadvantageous in the lawsuit cannot be denied. Thus, they place an importance on border control in developing countries like Myanmar. -Even if IP laws are established, it takes time for disseminating the system. Therefore, enhancement of effective control by customs and police is important for companies. The future issue is that investigation firms which can handle IP counterfeit are not well developed in Myanmar.

(4) Issues and challenges -Effective border control is required. Additionally, investigation firms for IP counterfeit are needed. IP counterfeit prevention campaign toward consumers would be effective.

5.2.6 Company F

(1) Type of business: Manufacture and sale of motor and motorcycle

(2) State of business: -Partner (local company) imports motorcycles and manages service factory (due to the

- 55 -

legal limitation for foreign capital). Counterfeits of Japanese motorcycles are prevalent in the market. It’s almost a lawless area.

(3) IP system, etc. a. Trademark right -There are trademark counterfeit cases in various regions of Myanmar (Bago, Mandalay, Dawei, etc.). Almost all of the counterfeits are manufactured in China and distributed in the market. There are cases that the Japanese company directed the local partner to send a warning letter against counterfeit under the name of the Japanese company.

b. Industrial Design right -The products sold in Vietnam and Thailand are copied in China and imported to Myanmar. The price of industrial design right imitating goods are about half of the genuine ones. It is assumed that consumers buy them with the knowledge of counterfeits since there is a huge gap in price. -The industrial design right targets ASEAN nations (production is not made in China), and the counterfeits distributed in Myanmar are manufactured in China. They cannot control counterfeit products at the borders and in the market (exercise the right) because Myanmar does not have the Industrial Design Law.

c. Patent right -Many of patent infringing goods cannot be judged from the appearance. Therefore, they purchase and examine suspicious goods and if they find counterfeit products, they take a measure.

d. Others -A situation in Vietnam was initially similar as that of Myanmar at present. That is, a mechanism of punishment and control was not sufficient and counterfeit was not properly controlled. After having several times of discussion with Ministry of Science and Technology of Vietnam, effective control became available. Especially at the border they try to cooperate with the customs. If there is an expert opinion system of IP examinig whether a product is a real or fake , it would be useful.

(4) Issues and challenges -Strengthening of punishment is necessary. It is important to enhance the penalty not based on the standard of Myanmar but on the global standard. Hope the customs will inspect all the products but it’s not feasible, so it’s desirable to have a mechanism to inspect and let companies know if the customs find something devious based on a company name or trademark. A mechanism for controlling not only product’s copy but also part’s copy needs to be examined.

- 56 -

-Implementation is more important than enactment of laws. The industrial design system is desired to be established immediately (for exercising the right). Many of developing countries focus on whole design and do not have a partial design system, so the products which are made of combining a part of designs of two different companies are distributed. Therefore, the partial design system needs to be enacted. Finished products can be controlled in the market, but there is no appropriate law for controlling the factory which manufactures infringing parts. There is also no mechanism to control the company which makes a mold of infringing goods. It’s necessary to develop a certification system of safety standard, etc. in order to protect genuine industrial products.

5.2.7 Company G

(1) Type of business: Manufacture and sale of motor and motorcycle

(2) State of business: -About 800,000 motorcycles are imported from China in a year after the ban was lifted in 2010. Chinese-made motorcycles with bad quality are easy to be broken. Repairs are frequently required. However, the price is around half to one third of the genuine product. The price of Chinese motorcycle is 600,000 Kyat (60,000 yen), while Japanese ones are priced between 1.5 million and 2 million Kyat. Usually counterfeits are eliminated soon after they enter the market, but other foreign products didn’t enter in Myanmar (due to the long-lasting economic sanction), and Chinese-made products became prevalent.

(3) IP system, etc. -They register trademark in Myanmar and also put advertisement in the newspapers. There is no way to take countermeasures against IP counterfeit. 95% of the market is filled with Chinese-made counterfeits. Unless such a trend of IP counterfeit is stopped, it’s difficult to expand their business. -The most selling motorcycle in Myanmar is imitation of Japanese-made motorcycle. Some of them use the brand name as it is. Copies of parts are also circulated. -Myanmar is composed of Regions and States, but it is difficult to control counterfeit at the border since the authority of the central government does not easily extend to the States. -Enactment of IP laws in Myanmar enables to bring a suit, so early legislation is desired. Once counterfeits are distributed in the domestic market, it is difficult to stop the spread, therefore, it is important to control counterfeits at the border.

(4) Issues and challenges -As a measure against counterfeits, it is effective to combine the following two; (a) control at the border, and (b) control the shops selling infringing goods. It is necessary to enhance awareness of retailers that “it’s wrong to sell illegal goods. To this end, a systematic legal

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system and proper management system are important. The legal system in Myanmar is old so that penalties are not appropriate. Therefore, it is necessary to have effective penalties appropriate to the current situation as preventive measures.

5.3 Awareness of Issues on Intellectual Property by Companies

The following five points are major awareness of IP issues by Japanese-affiliated companies with which the interview was conducted.

(1) Development of IP Legal System From a perspective of risk management, compliance with laws is the fundamentals of business. Especially large enterprises are required to comply with laws and regulations from a viewpoint of compliance. Therefore, the current situation where IP laws are not developed poses a problem in terms of risk management for large corporations.

(2) Implementation of Effective and Transparent IP Laws Transparency needs to be secured in the business. The transparency is more important in implementation of laws. It means that clarification of how the laws are applied in actual business will lead to promotion of corporate activities. For instance, even if IP counterfeit is stipulated, it is required to clarify which organization, how and in what procedure counterfeit will be handled.

(3) Strengthening of Enforcement The companies require strict control of counterfeit and pirated goods against their IPRs as it hinders their corporate activities. But actually no IP laws exist (except for copyright), border control of IPR infringing goods at customs is not sufficient, and counterfeits are prevalent in the market in spite of the control by police. In order to develop sound business environment, it is an urgent task to tighten the market control beside the border control, develop proper legislations for that purpose, and formulate an enforcement policy.

(4) Increasing Experts of IP Practice Since IP is directly connected with business, it does not function sufficiently only by legal development. Therefore, it is indispensable to increase experts of IP practice in the private sector. For example, the experts for filing IP applications, investigating IP infringement, judging IP infringement, etc. are required. They are not (should not be) necessarily stipulated in the IP laws, and thus not only the government but private organizations have to play a central role for promoting the development.

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(5) Development of IP related Laws IP system is a proprietary information protection system. Needless to say, it is important for companies advancing overseas to protect technology information and knowhow. Since there is a risk of information leakage, a registration system is not suitable for them and they are not a type of IP that an exclusive right is granted. It will be necessary to prepare a legal framework to regulate illicit acquisition and illicit use of proprietary information from a perspective of ensuring fair competition.

5.4 Current situation of Enforcement among Ministries

(1) MOST Enhancement of enforcement is promoted by incorporating the provision of customs control into the IP draft. According to the 11th draft of Copyright Law, for instance, provisions of “Copyright Protection at Customs” are incorporated. The same draft also set up provisions as to “Civil Procedure at IP Court in Copyright Infringement Case”. Similarly, the 11th draft of Trademark Law provides the protection by customs and the procedure at IP Court. However, it is not determined when IP Court will be established.

(2) Ministry of Commerce The “Consumer Affairs Division” assumes enforcement in Ministry of Commerce. The division is in charge of product safety, consumer education, infringing goods, etc. Enforcement by the Ministry of Commerce is made from a viewpoint of controlling unsafe products rather than controlling IP infringement. The control of infringing goods is not conducted independently by the Ministry of Commerce but in cooperation with the Sea Customs.

(3) Ministry of Information “Myanmar Motion Picture Enterprises” which is a subordinate organization of Ministry of Information controls infringement in motion picture industry through cooperation with police.

(4) Ministry of Home Affairs (Police) Enforcement by police is not always based on a complaint from a right holder. Generally, the police control through collaboration with business associations. The flow of enforcement is as follows:

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The police also conduct raid. They prepare necessary documents and request a warrant to court for the raid. Due to the prevalence of internet environment in recent years, Myanmar Cyber Response Emergency Team was established. They aim to ensure the cyber safety and have few cases in a year. The cybercrime requires certain work with engineers, etc. and they paid a visit of a police inspector of Kyoto Prefectural Police and exchanged opinions.

5.5 Necessity of Establishing a Proper Scheme for Enforcement

The picture below prepared by International Criminal Police Organization (ICPO) illustrates a map of IP infringement in the world. Myanmar is among severe IP infringement countries.

A World Map of IP Infringement

（http://securepharmachain.blogspot.jp/2010/02/interpol-counterfeit-medication.html）

As mentioned earlier, counterfeit products and pirated goods are openly sold in Yangon Bogyoke Aung San Market, there is a store specially dealing with well-known brand counterfeit products. Pirated goods such as music CD and audiovisual DVD are sold on the street everywhere. Enforcement body in Myanmar, mainly Customs and Police, is not enough. Policy, laws and regulations and enforcement, all are needed for establishing a healthy consumer market, and promoting international trade. Thus, strengthening functions of concerned ministries (organizations) are quite essential.

The current enforcement body in Myanmar is illustrated below. Customs controls at borders

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(seaport, airport and landport), police controls market and court provides judicial remedies. However, in reality, effectiveness of enforcement is questionable. For example, Sea Customs Act 1878 Chapter IV regulates prohibitions and restrictions of importation and exportation, and Article 18 (d) regulates that “goods having applied thereto a counterfeit trade-mark within the meaning of the Penal Code, or a false trade-description within the meaning of the Merchandise Marks Act”. But Customs mainly control products from the viewpoint of “country of origin”, not of IP infringement. The diagram below illustrates IP Office. It has not established yet, but is expected to play an important role in effective enforcement.

Enforcement Body in Myanmar

5.6 Enforcement Body in ASEAN

Enforcement body in ASEAN (4 countries) are described below. You may understand that enforcement body includes not only IP Office which is in charge of registration and examination, but other organizations concerned. (See Appendix 3 )

(i) Indonesia Enforcement body in Indonesia is as follow- ・Directorate General of Customs and Excise (“DGCE”) ・Directorate General of Intellectual Property, Department of Law and Human Rights (“DGIPR”) ・National Task Force for IPR Violation Prevention (“National IP Task Force”) ・The Commercial Court – civil remedies ・The District Courts – criminal remedies

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(ii) Malaysia Enforcement body in Malaysia is as follow- ・Intellectual Property Corporation of Malaysia (“MyIPO”) ・Ministry of Domestic Trade, Cooperation and Consumerism (“MDTCC”) ・Malaysian Courts ・Attorney General of Malaysia ・Royal Malaysian Police ・Royal Malaysian Customs Department ・Kuala Lumpur Regional Arbitration Center (“KLRCA”)

(iii) Thailand Enforcement body in Thailand is as follow- ・The Department of Intellectual Property (the “DIP”), Ministry of Commerce ・The Customs Department ・The Central Intellectual Property and International Trade Court (the “CIPITC”) ・Department of Special Investigation (“DSI”), Ministry of Justice ・Economic and Cyber Crime Division (“ECD”) of the Royal Thai Police

(iv) Vietnam Enforcement body in Vietnam is as follow- ・National Office of Intellectual Property of Vietnam (“NOIP”) ・Ministry of Science and Technology (“MOST”) ・Copyright Office of Vietnam (“MOCST”) ・Market Surveillance Agency (“MOIT”) ・The Customs of Vietnam (“GDC”) ・People’s Police ・People’s Committee ・People’s Courts ・The People’s Procuracy of Vietnam ・Vietnam International Arbitration Center

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Chapter VI General Outcomes and Proposals

Chapter VI: General Outcomes and Proposals

6.1 General Outcomes

This is not sufficient to establish IP Office and enact IP laws for developing IP system. The establishment of intellectual creation cycle of appropriate protection, exploitation and creation of IP and its efficient rotation lead to socio-economic development. From this perspective, we provided support for the enactment of IP four laws and establishment of IP Office in Myanmar. To be specific, we conducted three times of Dialogues, extracted the challenges, and summarized the measures to be taken in the future.

(1) With regard to the draft law, JPO Support Team took the lead in providing concrete advice to the IP section of MOST through Dialogue and breakout sessions for promoting understanding of IP legislation and the draft, keeping the consistency with TRIPS Agreement in mind.

(2) As for the detailed regulations, since it is a significant challenge for the future, JPO Support Team mainly offered specific and practical advice on the business flow based on abundant practical experiences of JPO to the IP section of MOST.

(3) With respect to the establishment of IP Office, JPO Support Team took an initiative in advising the IP section of MOST concerning purpose, work contents, structure, personnel allocation, IT system, etc.

Regarding these, there are issues that need to be urgently addressed, issues that have to be prioritized, and issues that should be tackled in line with them in the recommendation of 6.2 (Refer to Appendix 4 “Roadmap (tentative)”).

In addition, input of necessary items to be addressed in order for IP system to function in the society and economy was made.

(4) The importance of collaboration among relevant government organizations for attraction of investment from overseas and economic development was input to IP Support Team and Extended IP Support team.

(5) The significance of enforcement was informed to IP Support Team and Extended IP Support Team since the rampant situation of IPR counterfeits and piracy in the market was recognized through the survey in Myanmar.

(6) Based on the result of survey to government organizations and private sector of Myanmar,

- 65 - the importance of human resource development concerning IP and education & enlightenment for private sector and business people concerned as well as establishment of private organization relating to IP was input to IP Support Team and Extended IP Support Team.

The Result of our surveys is as follows:-

(1) Current Status of IP Law System There are no laws regarding trademark, patent and industrial design. Trademark, patent and industrial design are registrable under the Registration Act 1908; however, no law provides for the procedures and effects relating to such registrations. In Myanmar, trademark, patent and industrial design may be protected under the common law, or respective provisions provided in certain laws, such as the Specific Relief Act 1877, and Penal Code 1860. The provisions of the Copyright Act 1914 are out of place in the modern age due to the lack of amendments in accordance with the changes in the times. As for the protection of trade secret in Myanmar, there is no specific law to protect it but is considered to be protected under the common law.

(2) IP related Ministries In Myanmar, printing and publication require registration under the Ministry of Information. This registration is not for copyright but for magazines and publications and is required to be made once in a year. “Myanmar Motion Picture Enterprises” which is a subordinate organization of the Ministry of Information controls infringements frequently with police. The Ministry is aggressively involved with joint ventures and PPP (Public Private Partnership) with foreign corporations for promoting technology transfer from overseas in relation to FDI. Although they promote technology transfer from overseas at present, they consider it necessary to produce technology on their own in the future. However, no activities for that end are conducted due to the limitation of budget. They consider the selection of kind of education system as one of their challenges. As a law concerning communication, “Electric Transaction Law” was enforced in 2004, but it is still under review at the moment. Since it relates to electronic commerce (content business), it is anticipated that copyright will be included. Since the Ministry of Commerce originally handles trademark, they recognize their responsibility for developing trademark system. Ministry of Commerce doesn’t have a department specialized in trademark, but some staff had trainings on TRIPS Agreement and others, thus they have basic knowledge on IP. Generally, the police control crimes relating to IP infringement through collaboration with business associations. Since business associations do not know how to cope with IP infringements, they need to work with the police. The flow starts with collaboration with business associations then collection of information on infringement and finally to intervene the market. The police also conduct raid. The police conduct training on basic matters of IP since two years ago.

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(3) Current Situation of IP Laws and IP Office In order to fulfill the obligations, MOST has been playing the central role for drafting the IP four laws (patent, industrial design, trademark, and copyright), and has been proceeding the task with the support from WIPO and JPO. MOST mainly prepares for setting up IP Office, but it is the Parliament that will decide the positioning of IP Office as a government organization and the ministry which will have the jurisdiction over IP Office.

(4) Current IP Situation The only law dealing with IP in Myanmar is the Copyright Law, which was enacted in 1914. Infringements of IP rights have been handled under the Special Relief Act 1877, the Television and Video Law, and the Penal Code, but it is clear that IP rights are not being adequately protected due to the lack of a specific framework. According to the company interview, major concerns are development of IP legal system, implementation of effective and transparent IP laws, strengthening of enforcement, increasing experts of IP practice, development of IP related laws.

There are four major issues/challenges. (i) Necessity of Regulations and Setting up the organizational structure of IP Office Although IP draft laws seem to comply with TRIPS Agreement or international standards, business flow and regulations have not yet examined appropriately. In the near future, Myanmar needs to work on business flow and regulations together with setting up the organizational structure of IP Office.

(ii) Necessity of Cooperation and Collaboration with Concerned Ministries Although IP is related to concerned ministries, there has not been coordinated enough between MOST and them according to the survey. The IP system to promote FDI and economic growth, it is essential to coordinate among concerned ministries in terms of clarifying roles, functions and policies in a concrete manner. Additionally, the establishment of “Central Control Board” shall be considered.

(iii) Necessity of Establishing Enforcement Body While current situation of concerned organizations relating to IP enforcement in Myanmar has been observed, the functions and system of making it work has not been examined adequately. Therefore, it is essential to establish effective enforcement body including Customs, Police and new IP Office together with the Ministry of Commerce, the Ministry of Information and other concerned ministries. As we have been observed that counterfeit products and pirated goods prevail in the market, it is also essential to strengthen penal sanctions against infringement restraining illegal behavior.

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(iv) Necessity of Establishing IP Related Organizations This is essential to establish IP related organizations like both governmental and private organizations to make IP system function, for the purpose of facilitating a government-private interface with new IP Office. Additionally, this is crucial to continuously provide IP awareness seminar for government employees, business associations, attorneys and general public in an effective manner. Laws in italic letter in the table are not yet established. Thus, after establishing four IP laws or partially in parallel with them, those laws in italic (see the list on page 74) shall be considered for legislation.

6.1.1 Vision

The “Vision” here indicates the principles to be shared and the direction to be aimed at. They should be shared among all the stakeholders for building IP system in Myanmar. It is expected to get opinions like “Why is the IP system necessary?”, “What will change if the IP system is established?”, or “Isn’t the IP system a mechanism for protecting advanced nations?” The IP system promotes a willingness to create through properly protecting intellectual creations and the establishment of sound market will contribute to the development of socio-economy and culture. In order to realize it, the following visions are necessary.

6.1.1.1 Intellectual Property System for Promoting FDI and Developing Economy

Myanmar has become a signatory to World Trade Organization (WTO) in January 1995 and therefore has an obligation to comply with TRIPs Agreement (a probation period is extended to 1 July, 2021 from 1 July,2013.). The Myanmar Union Government fully recognizes the importance of IP for attracting foreign investment and developing domestic industry. In this regard, the government works hard to establish IP system. Currently, IP laws including Patent law, Industrial Design law, Trademark law and Copyright law are under the legislative process. Establishment of IP Office is also under discussion.

In the meantime, both the Japanese and Myanmar governments, at the official meeting of Prime Minister Shinzo Abe and Union President Thein Sein, signed “Agreement on Liberalization, Promotion and Protection of Investment between Japan and the Republic of Union of Myanmar (Japan-Myanmar investmentAgreement)” on 15 December, 2013. Securing investment environment and legal stability would lead to attract investment and technology transfer from Japan.

However, legal infrastructure for IP is not developed in Myanmar, so the investment and technology transfer would not happen unless current situation changes. In reality, though Myanmar has limited IP laws, i.e. Copyright Law 1911 and Patents and Designs (Emergency

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Provisions) Act 1946, a century-old Copyright Law is still put in force and Patents and Designs (Emergency Provisions)Act was expired. In such circumstances, trademark which is imperative for commercial activities is protected under common law. But this is not the registration of rights of trademark. The current situation in Myanmar is unfavorable and risky for foreign investors and companies, as it does not secure legal stability.

The diagram below compares the economic status in Myanmar with ASEAN member countries, the data are extracted from the Work Competitiveness Report 2013-2014 prepared by World Economic Forum (Japan is added for your reference). This diagram shows that GDP per capita in Myanmar is US$835, which is the lowest, and lower than Cambodia and import and export rate against GDP are also significantly lower than other ASEAN member countries. In order to increase GDP, Myanmar has to work hard on how to increase export, consumer consumption and investment.

Comparative Diagram with ASEAN Member Countries

The comparative diagram below shows the indicators positively related to international competitiveness. In order to promote foreign investment, Myanmar will start with the export-oriented investment. In this regard, one of the important points is how to strengthen international competitiveness in global economy. Thus, technology development is quite essential for mid- and long-term strategy. The diagram shows that Myanmar is ranked the lowest or near to the lowest among 148 countries in almost all indicators.

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Technology-related Indicator Comparison with ASEAN Countries

（Reference: WEF International Competitiveness Report 2013-2014）

It is important to understand the developmental steps towards international competitiveness. Firstly, institution, law and capacity development are facilitated. Unless this basic step is fulfilled, trade, investment and technology transfer would not be properly promoted for the reason why a company considers risky to invest in a country where legal framework is undeveloped and is not transparent. This is also a matter of compliance, especially for a large corporation. Innovation, R&D and venture capital would be promoted based on higher education and training, and financial scheme for R&D. IP provides a foundation for higher development and consequently FDI and economy will be developed.

Developmental Steps toward International Competitiveness

（Reference: WEF International Competitiveness Report 2012-2013）

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6.1.1.2 Development of SME through utilization of Intellectual Property

Most of the companies in Myanmar are SMEs (92.6 %). The following is a comparison of SME definition between Japan and Myanmar.

Definition and Numbers of SME companies

Type Capital Workers Horsepower # of SMEs Percentage Medium Capital：1M〜5M Kyat 51〜100 25-50(horse 6,516 16％ Value of Annual Products： power) 2.5M〜10M Kyat Small Capital：〜1M Kyat 10〜50 3-25(horse 33,504 84％ Value of Annual Products： power) 2.5M Kyat (Procedure to the Private Industrial Enterprises Law (1990))

The following is the SME definition in Japan, where SMEs account for 99.7 % (4.191 million) of all companies (4.203 million). (Reference: “SME Policy in Japan” by Small and Medium Enterprise Agency, Ministry of Economy, Trade and Industry, 2011)

Definition of SME in Japan

SME Small business Type Capital Workers Workers Manufacturing <=300 million <=300 <=20 Wholesale <=100 million <=100 <=5 Retail <=50 million <=100 <=5 Service <=50 million <=50 <=5

Definitions of SME between Japan and Myanmar are not same but both countries share common features that most of companies are SMEs and play a crucial role for economic growth.

The diagram below shows a trap that most developing countries would be caught in. In near future, Myanmar will attract FDI in the labor-intensive industry as the infrastructure develops. Characteristics of this industry include unskilled workers and low technology. In order for a company to compete in the global market, it considers labor wage as a cost or expense. If labor wage increases, FDI companies may look for another investment destination because it continuously manufactures competitive products with cheap labor. In reality, labor wage hike

- 71 - seems to be inevitable for some reasons including inflation and awareness on basic human rights. As one may be aware, unless wage hike did not happen, domestic consumer market would not expand. In such environment, FDI, technology transfer and localization of technology are quite essential to develop value-added domestic industry and consequently, healthy consumer market would be developed. IP system functions as a legal infrastructure.

Trap that Developing Countries be Caught in

6.1.1.3 Cooperation and collaboration among concerned ministries for Intellectual Property national strategy

As you know, IP covers wide areas including industry, commerce, culture, sports, etc. The followings are some examples, for your reference, to understand the relationship between area and concerned ministries.

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Areas and Concerned Ministries

In order to promote “Science and Technology Innovation”, cooperation and collaboration among concerned ministries including Ministry of Science, Ministry of Information, Ministry of Communication and Information Technology, Ministry of Industry, Ministry of Commerce, etc. shall be promoted. Science and technology needs a cycle like creation- legal protection - exploitation - creation. This cycle is called “IP Creation Cycle” and is important to activate for all concerned ministries.

As for sports and culture, Myanmar hosted the 27th SEA GAME in December 2013. The below is an official mascot, a couple of owls (see below) which are considered lucky charms in Myanmar tradition, have been observed anywhere in Nay Pyi Taw, Yangon and others. Additionally, a mascot was used for many merchandizing products to promote the event.

SEA GAME Mascot

( Reference：http://www.27seagam )

This mascot itself is an IP and will be protected under law. Character like this was used for many products and contributed to business significantly.

One should not forget the diversified culture in Myanmar, which is also closely related to

- 73 - business activities. For example, in Yangon Bogyoke Aung San Market, tourists enjoy diversified cultural goods such as folk handicrafts, paintings, lacquer wares, ethnic clothes, etc. There is no doubt that those are among intellectual . Draft copyright law (Works protected and Subject Matters not Protected) defines “ works traditional cultural expression or expression of folklore” as works protected.

Other than 4 draft IP laws such as Patent law, Industrial Design Law, Trademark Law and Copyright Law, there are some other important IP laws. They are Semiconductor Layout Protection Law, New Plant Variety Protection Law, Protection on Bio-diversity and Traditional Knowledge, etc. Additionally, with the development of information communication technology, legal framework for the Internet environment, unfair competition issues, university-industry collaboration scheme, etc. would be other issues to be discussed in Myanmar in near future. The table below, for your reference, is a summary of IP related topics. The laws in italics are those which Myanmar has not prepared/established yet. They are expected to be considered after (or, partly in parallel) drafting the four IP laws (patent, industrial design, trademark and copyright). IP laws play a crucial role for the promotion of national strategy, but needless to mention that cooperation and collaboration among concerned ministries are essential.

IP Related Topics, IP Laws and Responsible Ministries

Subject Law Responsible Ministry Invention Patent law IP Office Industrial design Industrial design law IP Office Marks Trademark law IP Office Copyrights Copyrights law IP Office － (draft under New plant variety New plant variety law Ministry of Agriculture and Irrigation) Semiconductor layout Semiconductor layout design － design protection law Trade secret Unfair competition prevention act － Convention of Bio- diversity,Law on Genetic resources, bio-diversity and access and － traditional knowledge benefit-sharing Internet Law on provider’s liability － University-industry Technology Licensing Office Law,so- － collaboration called Bayh-Dole act Copyright management Law on copyright management society － organization

6.1.1.4 Intellectual Property Awareness and Intellectual Property Education

Creation, protection and exploitation of IP are linked like a cycle, which is called “IP Creation Cycle” in Japan. This is a basic concept for Japanese IP strategy.

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IP Creation Cycle

IP education plays a key role in this IP Creation Cycle. IP education should be provided for all three elements of the cycle. For example, as for creation, IP education for pupils at elementary school, and MOT (management of technology) for students at technical university should be considered. As for protection, IP education for pupils at elementary school, IP training for researchers at university, for attorney-at law and patent attorney, and IP training for company workers should be considered. As for exploitation, IP education for concerned staff at university and industry should be considered.

As we see, the propulsion of IP awareness and IP education shall be widely shared with all stakeholders.

6.2 Proposals1

As a background of items described in Chapters I – V, the proposals, which are made for future initiatives in Myanmar, can be categorized as- (i) IP draft law (Proposals 1-2), (ii) establishment of IP Office (Proposals 3-15), and (iii) promotion of function of IP system as a whole (Proposals 16-26).

Among the proposals, Proposals Nos. 1-15, 20(1), 25, and 26 were written by JPO Support Team.

The list of targets and authors of the respective proposals is shared below-

1 Refer to the "Roadmap (tentative) " in Appendix 4 illustrating work flow overtime towards the establishment of IP Office. It is noted that details of each item and timeline shall be coordinated and discussed with the Myanmar side.

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Proposal to IP Section

Number of Proposals Proposed by 1. Proposals on the IP Laws ・JPO Support Team 2. Proposals on the Detailed Regulations for the IP Laws 3. Ensuring “Transparency,” “Stability” and “Convenience” in operations at the IP Office 4. Proposals for ensuring transparency 5. Proposals for ensuring stability 6. Proposals for ensuring convenience 7. Proposals on procedure flowchart 8. Proposals on business flow 9. Proposals on documents 10. Proposals on gazettes 11. Proposals on registration certificate/register 12. Proposals on organizational structure 13. Proposals on IT infrastructure 14. Proposals on formality checks and substantive examinations 15. Proposals on the department in charge of copyrights in the IP Office 20. Proposals on Enhancement of handling by the court ・JPO Support Team ・Consultant Team 25. Proposals on establishment of IP related organizations ・JPO Support Team 26. Proposals on Promotion of PR activities and Human Resources Development of the Staff in IP Related Authorities

Proposal to IP Support Team and Enforcement-related Organizations (Extended IP Support Team)

Number of Proposals Proposed by 16. Proposals on Enhancement of alliance and cooperation with ・Consultant Team relevant ministries for the function facilitation of IP system 17. Proposals on Enhancing enforcement at MOST 18. Proposals on Enhancing enforcement by customs at border control 19.Proposals on Enhancing enforcement by police in the market

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20.Proposals on Enhancement of handling by the court ・JPO Support Team ・Consultant Team 21. Proposals on Establishment of Market Surveillance Bureau ・Consultant Team 22. Proposals on establishment of Central Control Board for more effective function of IP system 23. Proposals on enactment of IP fundamental law 24. Proposals on enactment of trade secret protection law 25. Proposals on establishment of IP related organizations ・JPO Support Team 26. Proposals on Promotion of PR activities and Human Resources Development of the Staff in IP Related Authorities

6.2.1 Proposals on Intellectual Property Laws and Detailed Regulations

6.2.1.1 Proposals on the Intellectual Property Laws

【Proposal 1】Proposals on the IP Laws ① Proposals on the Law ② Proposals on the Copyright Law

(1) Proposals on the Industrial Property Law - The latest law presented to the Japanese side in the second dialogue held in December 2013 gives due consideration to the consistency with the TRIPS Agreement. Complicated works to draft the law have steadily progressed. On the other hand, there are some matters to be modified in this latest law, from the viewpoint of developing investment frameworks and maintaining consistency of terminology and articles. In the second dialogue, the Japanese side proposed the matters to be modified in the latest, and sent a written comment on this proposal after the second dialogue.

- In addition to this written comment, it is necessary to establish provisions that deal with international applications under the Patent Cooperation Treaty in the Patent Law, in the same way as they were established in the Industrial Design Law and the Trademark Law, taking difficulties in future legal revisions into account.

(2) Proposals on the Copyright Law - The latest law presented to the Japanese side on 4 December, 2013 is consistent with the substantive standards that protect copyrights and as provided for in the TRIPS Agreement, and it introduces provisions that deal with the protection of copyrights and related rights in terms of the digital framework, which includes legal

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remedies against circumventions of technological measures and legal remedies against removing or altering information on managing electronic rights.

- However, in the second dialogue, the Japanese side proposed items that should be considered for the provisions dealing with registering copyrights and other items such as the effects and procedures for applications. The Japanese side sent a written comment on its proposal also in writing after the second dialogue.

- In addition to the items included in this proposal, it is necessary to consolidate the standards needed for establishing collective management organizations (CMOs) for copyrights and rules for authorization of royalties for copyrights, from the viewpoint of promoting fair and smooth use of copyrighted works in the Detailed Regulations as it relates to the Copyright Law.

6.2.1.2 Proposals on the Detailed Regulations for the Intellectual Property Laws

【Proposal 2】Proposals on the Detailed Regulations for the IP Laws ① Proposals on the Detailed Regulations for the Industrial Property Law - Matters required at the time of adverse disposition - Matters required from the viewpoint of ensuring due process - Matters to be provided for in the Detailed Regulations on respective laws

② Proposals on the Detailed Regulations of the Copyright Law - Administrative works (related to copyrights) supervised by the IP Office - Procedures for registering copyrights, etc. - Establishment of collective management organization and authorization of royalties for copyrights, etc. - Limitations on Copyright - Collection of secondary use royalties for performers and phonogram producers

(1) Proposals on the Detailed Regulations of the Industrial Property Law - The following matters shall be provided for in the Detailed Regulations, etc., in order to ensure smooth operations and maintain fairness and transparency of the system at the time of enforcing the Patent Law, the Industrial Design Law and the Trademark Law.

(i) General matters 1) Matters required at the time of adverse disposition (a) It is necessary to provide an opportunity for applicants to amending filed documents, in order to solve reasons for adverse disposition - It is desirable that full documents be submitted at the time applicants file applications, in

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order for the IP Office to smoothly process the applications. However, it might be difficult for applicants to submit full documents when they file under the first-to-file system. Therefore, it is necessary for the applicants to be given an opportunity to voluntarily make an amendment to filed documents under certain requirements, after they have filed their applications.

- Moreover, in some cases, applicants amend filed documents, such as amending restrictions of the scope of claims, etc. Based on this, reasons for adverse dispositions are solved, so that it becomes possible to grant the right. Therefore, it is necessary for applicants to be given an opportunity to amend filed documents at the time of adverse dispositions.

(b) It is necessary to stipulate provisions that deal with requirements for making amendments - Permission to allow unconditional amendments violates the principle of the first-to-file system and causes unpredictable damage to third parties. On the other hand, a sufficient period of time needs to be given in order for the applicants to prepare accurate counterarguments and make amendments. (It is also necessary to take into account the time needed for applicants to get translations, etc., if they are foreign applicants.) Keeping this in mind, it is necessary to include provisions in the Detailed Regulations, which stipulate the requirements for amendments (restrictions in terms of time and content) and to set the standards for judging whether or not an amendment is legitimate in the Examination Standards or guidelines, in terms of ensuring transparency of the procedures.

2) Matters required from the viewpoint of ensuring due process (a) It is necessary to include provisions that stipulate specific procedures for invalidations of rights and appeals against the Director General. - Although provisions dealing with invalidation of rights and with appeals against the Director General are stipulated in the law, there are few provisions that deal with the actual, specific procedures for doing so. It is necessary, therefore, to include provisions in the Detailed Regulations, which specify the actual procedures. Also, from the viewpoint of ensuring due process, it is necessary to give the parties concerned sufficient opportunities for presenting their counterarguments and, when necessary, opportunities for allowing them to make corrections such as restricting the scope of claims.

3) Other matters (a) Including provisions that stipulate the ways for according filing dates and counting periods of time is necessary - It is necessary to include provisions that stipulate the ways for according filing dates when applications are allowed to be sent by mail.

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- It is necessary to include provisions that specify the ways periods of times are calculated when applicants have deadlines for following filing procedures.

(b) It is necessary to include provisions that stipulate the specific amounts of various fees - It is necessary to include provisions that stipulate specific fee amounts. The draft law only contains general provisions stipulating fees.

(ii) Individual matters 1) Patent Law (a) Provisions stipulating divisional applications and converted applications - It is necessary to include provisions that stipulate the requirements for and the effects of divisional and converted applications

2) Industrial Design Law (a) Provisions stipulating the filing procedures for partial designs - It is necessary to include provisions that stipulate the indications of partial designs in drawings. For example, partial designs can be indicated in solid lines while other parts can be indicated in broken lines.

(b) Provisions stipulating methods for publishing Industrial design - It is necessary to include provisions that stipulate the details that are to be disclosed and the ways applications are to be published.

(c) Provisions stipulating methods of publication after decisions on oppositions have been made - It is necessary to include provisions stipulating how industrial designs are to be published, when decisions on oppositions have been made.

3) Trademark Law (a) Provisions stipulating the timing and methods for finding well-known marks - It is necessary to include provisions that stipulate the timing for finding well-known marks and the actual processes for finding them.

(b) Provisions stipulating international applications - It is necessary to include provisions that stipulate the specific procedures that applicants must follow when they file international applications under the Madrid Protocol.

(c) Provisions stipulating collective marks - It is necessary to include provisions that stipulate the use of collective marks by

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partners.

(d) Provisions stipulating certification marks - It is necessary to include provisions that stipulate the use of certification marks by third parties.

(e) Provisions stipulating the timing for determining relative grounds for refusal - It is necessary to include provisions that stipulate the timing for determining relative grounds for refusal.

(f) Provisions stipulating the handling of applications filed on the same date - It is necessary to include provisions that stipulate the ways applications filed on the same date are handled, with regard to identical or similar trademarks.

(g) Provisions stipulating the content of examinations in transitional measures - It is necessary to include provisions that stipulate specific examination procedures during periods when transitional measures are in place.

(2) Proposals on the Detailed Regulations of Copyright Law In line with the Copyright Law, the IP Office shall provide for the following items in the Detailed Regulations, in order to ensure appropriate and fair operations in terms of enforcing duties related to copyrights.

(i) Administrative duties taken by the IP Office (copyright related) - It is necessary to stipulate the duties and structure of the IP Office in order to utilize the knowledge and experiences of experts, coordinate various interests of stakeholders, and organize a task force to design and plan important policies.

(ii) Procedures for registering copyrights, etc. - In accordance with international rules such as the Berne Convention, a copyright is considered to be automatically granted at the same time as the copyrighted work itself has been established. Moreover, as the revised Copyright Law includes a system for giving public notices on the facts of copyrights and for ensuring the safety of transactions when copyrights are transferred, it is necessary to stipulate in the Detailed Regulations the items to be registered and their effect.

(iii) Establishment of collective management organizations and authorization of royalties for copyright etc. - Collective management organizations play an important role in appropriately ensuring the benefits of authors and the smooth use of copyrighted works. In this context, it is necessary to

- 81 - regulate the establishment of collective management organizations under law, taking their importance into consideration.

- Moreover, it is necessary for the IP Office to ensure adequacy and fairness of royalties by authorizing the royalty rules specified by collective management organizations.

(iv) Limitations on Copyrights - The revised Copyright Law includes provisions that indicate cases in which rights have been limited in a specified manner (teaching purpose, the purposes of study, scholarship, private study at library and archive, etc.). Therefore, it is necessary to include provisions that stipulate specific limitations and exceptions, so that it will be possible to determine what kind of acts are subject to these limitations on and exceptions to rights in a strict and specific manner.

(v) Collection of secondary use royalties for performers and phonogram producers - Performers and producers of phonograms shall enjoy the right to be awarded one, single, equitable remuneration for the use of their phonograms that are published for commercial purposes for broadcasting or communicating to the public. In response, it is necessary to include provisions in the Detailed Regulations, which stipulate the methods of collecting secondary royalties from users.

6.2.2 Proposals on establishment of the Intellectual Property Office

6.2.2.1 Proposals on business flow, organizational structure, and IT infrastructure

(1) General matters 【Proposal 3】Ensuring “Transparency,” “Stability” and “Convenience” in operations at the IP Office ① Transparency of operations for both personnel at the IP Office and users such as applicants. ② Stability of operations throughout the year at the IP Office such as document acceptance, dispatch, examination, right registration, gazette publication. ③ Convenience to the IP Office and applicants (user friendly)

It is necessary to consider the IP Office’s operations by always bearing in mind transparency, stability, and convenience. In addition, it is necessary to bear in mind matters that are required to perform operations, and building an IT system that is to be used for performing the operations. Transparency, including accountability, means that the operations are at all times to be transparent with respect to the personnel at the IP Office and users such as applicants. Stability means that the IP Office’s operations such as document acceptance, dispatch, examination, right registration, and gazette publication are stably carried out throughout the

- 82 - year. Convenience means that the Office’s services are convenient for both the IP Office and its users such as applicants. It also means that any services provided and procedures followed are to be user-friendly, simple and prompt. In order for the IP Office to ensure transparency, stability and convenience, the JPO is prepared to send JPO specialists to the Myanmar IP Office and provide on-site support focused on the business flow, organizational structure, and IT.

【Proposal 4】Proposals for ensuring transparency ① Procedures for applicants based on laws and regulations ② The IP Office’s operations based on laws, regulations and operational guidelines - Patent Law, Industrial Design Law, Trademark Law, Copyright Law and relevant regulations - Formality examination guideline, substantive examination guideline, business flow and similar ③ Timely and accurate provision/publication of information - Provision of official gazette or information pursuant thereto - Provision of information in the format users can easily obtain and utilize it - Provision in the electronic format, Internet, text data, and in English - Provision of search tools

Transparency means that the IP Office’s operations and the procedures taken by applicants are to be transparent with respect to personnel at the IP Office and users such as applicants. Transparency also includes the requirement that accountability is maintained in response to the results thereof. Transparency of the applicant procedures is to be ensured by specifically stipulating such procedures in laws and regulations. Transparency of the operations of the IP Office is to be ensured by the Office’s personnel fulfilling such operations based on laws, regulations, and operational guidelines, including formality examination guidelines, substantive examination guidelines, and business flow. These laws, regulations and operational guidelines such as the formality examination guidelines and substantive examination guidelines provide procedural guidelines to each applicant. And these laws, regulations and operational guidelines provide judgment guidelines to the personnel at the IP Office. However, these rules do not allow us to see the whole picture of all the Office’s operations and the procedures taken by applicants. The business flow, which is needed to outline all the operations undertake by the IP Office in a comprehensive and holistic manner, is also useful for ensuring transparency. The accurate and prompt provision of gazettes and information in conformity to gazettes also contributes to ensuring transparency. When information is provided by the IP Office, it is important that such information be provided in formats that are easily accessible and available to users. For example, the provision of text data in English over the Internet and the provision

- 83 - of search tools are formats that are easily accessible and available to users. Moreover, the introduction of IT system will contribute to the accurate and prompt provision of information. The accurate and prompt provision of information to domestic and international applicants plays a key role in developing an environment that facilitates foreign investment and the growth of Myanmar-based companies. And over the medium- and long-term, this will result in the economic development of Myanmar.

【Proposal 5】Proposals for ensuring stability ① Judgment criteria in operations such as laws, regulations, operational guidelines and business flow - Prevent various judgments of each personnel ② Establishment of the organizational structure in compliance with situations - Clarification of the IP Office’s operations - Expected that trademark application would be on the focus - Applications associated with the transition from the current trademark-registration system - Demand at each regional counter (Applications are expected to be concentrated in the Yangon counter) - Deliberate personnel employment in consideration of economic growth, economic situations, and ages of personnel

Stability means that operations at the IP Office, such as document acceptance, dispatch, examination, right registration, and gazette publication are stably carried out throughout the year. The preparation of laws, regulations, operational guidelines and business flow sets forth certain standards by which personnel at the IP Office make judgments. This leads to ensuring stability in terms of operations and administrative actions at the IP Office. Furthermore, it is necessary to ensure stability of operations by clarifying overall operations of the IP Office including those not described in the business flow. It is necessary to establish an organizational system in response to clarified operations and situations. It is expected that the ratio of applications for trademarks will be high in the early days, when the IP Office is established. In this regard, it is essential to consider how to respond to the transitional period, when operations change from the current trademark registration system. Also, geographically speaking, most applications are expected to be filed in the Yangon Branch. In the medium and long terms, not only applications for trademarks but also applications for patents and so forth will increase due to anticipated economic growth and improved economic situation. In response to this, it is essential to systematically recruit employees and establish an organizational system taking into account economic growth, economic situations, and the age structure of employees.

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【Proposal 6】Proposals for ensuring convenience ① Introduction of IT system - Enhancement of convenience and accuracy for users such as the IP Office and applicants - IT system will become an indispensable infrastructure for the IP Office’s operations ② Simplified procedures for applications

Convenience means convenience not only for the IP Office itself but also users such as applicants. It also means the provision of user-friendly, simple, and prompt procedures and services. The introduction of IT system will improve convenience in terms of the IP Office’s operations and the procedures taken by applicants. Moreover, once IT system is introduced, it will be an indispensable infrastructure in terms of operations at the IP Office. It is desirable that the procedures taken by users such as applicants be user friendly, simple and prompt.

(2) Business flow (i) Procedure flowchart (Priority: A)2 【Proposal 7】Proposals on procedure flowchart ① It easily expresses Myanmar’s IP System - It is beneficial for users such as the IP Office and applicants ② Basis of business flow

A procedure flowchart was presented from the Myanmar side in the first dialogue held in October 2013. We also provided a procedure flowchart based on the latest draft laws presented to us on 4 December, 2013. The procedure flowchart, which expresses Myanmar’s IP system in an easily understandable manner, is useful for the IP Office and users such as applicants. Moreover, it serves as an important base for the business flow. Therefore, high priority and importance are given to the preparation of the procedure flowchart same as laws and regulations. The procedure flowchart needs to be modified in accordance with the latest draft laws and in accordance with legal revisions, even after the IP Office’s operations start. The procedure flowchart has to describe not only the main procedures (taken by applicants) and the IP Office’s operations but also everything stipulated in laws and regulations.

2 “Priority: A” as written in “(2) Business flow”, “(3) Organizational structure” and “(4) IT infrastructure” indicates a high-priority task.

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(ii) Business flow (Priority: B) 【Proposal 8】Proposals on business flow ① Business flow represents operations and their flow - It expresses detailed, actual operations on the assumption of practical operations - It converges onto actual operations based on laws, regulations and procedure flowcharts ② Operations are carried out based on operational criteria such as laws, regulations, formality examination guidelines, and substantive examination guidelines ③ Necessity of parallel operations with laws, regulations and procedure flowcharts preparations - Request from the IP Office establishment schedule and current situations ④ Response to new problems and matters to be confirmed - Addressing problems and matters to be confirmed through collaboration among personnel in charge - Reflection of results for laws, regulations, procedure flowcharts, and business flows ⑤ Completion prior to initiation of the IP Office’s operation is required - Priority preparation for external users’ related part such as applicants - Prior simulation in conformity with business flows

The business flow expresses details in terms of actual operations and their flow, based on laws, regulations and the procedure flowchart. It is necessary that operations be performed based on laws, regulations and the operation guidelines such as formality examination guidelines and substantive examination guidelines. As the business flow forms the basis of actual operations, high priority and importance are given to it in relation to laws, regulations and the procedure flowchart. Moreover, the business flow needs to be modified to comply with the latest draft laws and whenever legal revisions are made after the IP Office’s operations start. Considering the schedule for establishing the IP Office, there is no option but to prepare the business flow at the same time that laws and procedures are established. Information provided to us on the draft laws so far has been somewhat limited, making it impossible to finish preparing the business flow based on such limited information. We have prepared a part of Myanmar’s business flow based on the information provided to us so far and presented it in the third dialogue held in January 2014. However, further information is necessary in order to prepare the business flow. Although the business flow must be completed when the IP Office’s operations begin, new issues and matters to be confirmed are likely to arise in the preparation process. The business flow needs to be completed by addressing such issues and reflecting the results obtained from laws, regulations and the business flow. The questionnaire that we submitted addresses a part of the issues to be solved in preparing the business flow. We are set to cooperate in addressing issues in the future by preparing questionnaires aligned to each phase in preparing the business flow. Moreover, we are able to provide advice on the details that should be included in the business flow based on our experiences.

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It is necessary to complete the business flow before the IP Office’s operations begin so as to avoid confusion when the operations officially commence. It is particularly desirable to prepare parts of the business flow that affect external users such as applicants by giving priority to them, and provide necessary information to external users. Furthermore, it is necessary to conduct a simulation of operations following the business flow so as to avoid confusion at the time the IP Office’s operations commence.

(iii) Documents (Priority: A) 【Proposal 9】Proposals on documents ① Documents based on laws and regulations ② Format preparation for application documents and notification documents - Utilization of the PCT, PLT, Madrid Protocol, Hague, and other Office’s documents ③ Proposals of document lists - Collation list between document names and laws and so on to be its basic - Collation list between document names and item names

It is necessary to prepare application documents and notification documents based on laws and regulations, etc. High priority and importance are given to the preparation of formats for application documents and notification documents same as laws and regulations. It is desirable to prepare document formats with reference to the PCT, PLT, Madrid Protocol, Hague Agreement and other Office’s documents. Moreover, documents needs to be modified to comply with the latest draft laws and whenever legal revisions are made after the IP Office’s operations start. We presented a format of documents lists in which items such as document names, basis laws and regulations and items in documents correspond in the third dialogue in January 2014. These lists allow you to check basis laws and regulations without checking letters of laws and regulations. Moreover, when you consider items in documents, you can check consistencies of all the documents in parallel. The lists are also expected, for example, to help you avoid forgetting to set essential items.

(iv) Gazettes (Priority: A) 【Proposal 10】Proposals on gazettes ① Gazette publication based on laws and regulations ② Preparation of gazette format - International publication of PCT, International registration of Hague, Madrid Protocol, utilization of other Offices’ gazettes ③ Provision of information in the form users can easily obtain and utilize it - Provision in the electronic form, Internet, text data, and in English

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Gazettes must be prepared based on laws and regulations and so forth. High priority and importance are given to the preparation of formats for gazettes same as laws and regulations. It is desirable to prepare formats for gazettes in conformity to the WIPO standards and with reference to International publication of PCT, International registration of Hague, Madrid Protocol, utilization of other Offices’ gazettes. Moreover, gazettes needs to be modified to comply with the latest draft laws and whenever legal revisions are made after the IP Office’s operations start. It is important to provide gazettes in formats easily accessible and available to users. The provision of text data in English in electronic formats over the Internet and of search tools is considered to be a user-friendly format.

(v) Registration certificate/Register (Priority: A) 【Proposal 11】Proposals on registration certificate/register ① Registration certificate/register based on laws and regulations ② Format preparation for registration certificate/register - International registration of Madrid Protocol/Hague, utilization of other Offices’ registration certificates/register

It is necessary to prepare registration certificates and registers based on laws and regulations, and so forth. High priority and importance are given to the preparation of formats for registration certificates and registers same as laws and regulations. It is desirable to prepare formats for registration certificates and registers with reference to international registrations under the Madrid Protocol and the Hague Agreement and registration certificates and registers of other offices. Moreover, registration certificates and registers to be modified to comply with the latest draft laws and whenever legal revisions are made after the IP Office’s operations start.

(3) Organizational structure (Priority: B) 【Proposal 12】Proposals on organizational structure ① Clarification of each division’s function ② Ensuring human resources necessary for each division’s function ③ Strengthening cooperation with related authority, especially regulatory authorities ④ Corresponding with operations and the organization - Decision of divisions in charge of all operations at the IP Office operations - Operations not found in business flows, such as research, policy planning, personnel, international, budget, accounting, IT, statistics, and trainings - Operations common to all laws such as acceptance, data entry, dispatch, publications and registration - Rule of the role of posts and positions

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⑤ Clarification of operations by business flows - Definition of operation contents - Calculation of workload ⑥ Establishing an enriched structure for trademark - Expected that trademark application would be on the focus - Applications associated with the transition from the current trademark-registration system to a new system ⑦ Aiming at building a sustainable organization - Continuous recruitment - Taking age structure into consideration - Accumulation of knowledge and experiences as an organization

It is necessary to clarify functions required by each department in the organization for the purpose of avoiding any discrepancy with the roles of the IP Office provided for in the draft IP laws currently under consideration and develop an organizational structure and the purpose of commencing the operation when respective laws and regulations are enforced and to develop an organizational system in order to ensure human resources with capabilities required for fulfilling such functions. Moreover, the IP Office needs to strengthen the cooperation with related ministries and agencies (particularly with the regulatory body). For example, it should consider a possibility of establishing an organizational system to respond to requests for inquiry of products infringing IP rights from the custom authority. There is a need to establish departments in charge of necessary operations of the IP Office which are not described in the business flow, such as research, policy planning, personnel affairs, international affairs, budget, accounting, IT, statistics and training. An organization chart provided in the third dialogue held in January 2014 as a presentation material does not clearly indicate which departments are responsible for common operations to all the jurisdictions such as acceptance, data entry, dispatch, gazette publication and right registration. Moreover, it is desirable to clearly provide for the roles of respective departments and positions. Such information is necessary for preparing the business flow. Respective departments are divided by swim lanes and the correspondence of operations and departments is expressed in the business flow. Currently the business flow is not completed and it is not possible to define content of operations and workload. Thus, it is difficult to calculate accurately the number of employees. However, it seems to us that Myanmar is able to refer to organizations and the number of employees of the IP offices in the ASEAN region. It is desirable to enhance an organization handling trademark-related operations taking into account the response to the transition from the current trademark registration and the prediction that the ratio of applications for trademark would be high in the early days after the IP Office is established. Moreover, as most applications are expected to be filed with the Yangon Branch in terms of geography, it is hoped that the organization for receiving applications at the Yangon

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Branch is developed with careful consideration of the expectation. With regard to recruitment of employees, continuous recruitment on a yearly basis is expected rather than temporal mass recruitment. It is important to form an organization taking into account the age structure of employees in which employees of particular ages do not concentrate, as this affects operations when employees of particular generations retire in the same period in the future. Furthermore, for stable IP operations, knowledge and experiences need to be accumulated as organization and the formation of organization needs to aim at sustainable organization.

(4) IT infrastructure (Priority: B) 【Proposal 13】Proposals on IT infrastructure ① Gradual introduction of IT ② Access to information of WIPO-IPAS from the WIPO - Specifications of necessary hardware, software and networking - Corporation range and contents of the WIPO - Preparatory work ③ Determination of specifications of hardware, software and networking necessary for the IP Office - Classification of things into those to be provided by WIPO and those not provided - Sufficient consideration to information security - Suppliers (from domestic providers or import from overseas) ④ After introduction, IT system becomes necessary infrastructure of the IP Office’s operations - Organization establishment of operation, management and maintenance of IT system - Maintenance contract with IT vendor - Formulation of the system updating plan based on the life cycle of products ⑤ Ensuring the budget and human resources according to the system introduction plan, system operation/management/maintenance framework, and system updating plan

The gradual introduction of IT is desirable. First of all, it is necessary to manage information which enables you to check locations of documents and results of operations. Then, it is desirable to determine to which operations in the business flow you need to give priority of introducing IT. If you are considering WIPO-IPAS introduction, you need to contact the WIPO and acquire information on the specifications for hardware, software and networks required for this system, the scope and contents of cooperation given by the WIPO and up-front preparatory works. After you contact the WIPO, it is necessary to divide hardware, software and networks required for the introduction of WIPO-IPAS provided by the WIPO and those not provided by the WIPO. It is necessary to identify the specifications for hardware, software and networks for the IP

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Office’s operations including WIPO-IPAS, and plan their introduction schedule. Since information managed by the IP Office includes non-disclosure information, due consideration needs to be given to information security when the specifications for hardware, software and networks are confirmed. Moreover, it is necessary to check whether or not necessary hardware, software and networks are able to be procured from domestic providers or imported from other countries. Once the IT system is introduced, it will be an indispensable infrastructure for the IP Office’s operations and it will be difficult to enforce operations if the system stops. Therefore, it is important to develop in advance an organization establishment of operation, management and maintenance of IT system. It is desirable to conclude a maintenance agreement with an IT vendor. As you cannot use the introduced IT system forever, it is important to manage the lifecycles of hardware, software and networks and formulate system updating plans. To this end, the IP Office needs to ensure budgets and human resources in accordance with the system introduction plan, the organization for system operation, management and maintenance and the system updating plan.

6.2.2.2 Proposals on formality checks and substantive examinations

【Proposal 14】Proposals on formality checks and substantive examinations ① OJT ② Dispatch of experts from the JPO ③ Consolidation of manuals for the examination standards, etc. - The provision of services such as accurate and prompt formality checks and substantive examinations is a central duty of the IP Office. On the other hand, since substantive examinations, in particular, require experiences and know-how, OJT provided by experienced examiners is effective to complement lack of such experiences.

- The JPO is prepared to provide tailored trainings consisting mainly of OJT by inviting patent and trademark examiners of the Myanmar IP Office and support for effective development of capabilities in line with the needs in consultation with the Myanmar side.

- Moreover, the JPO is prepared to dispatch its own experts to the Myanmar IP Office and provide on-site guidance and trainings on formality checks and substantive examinations.

- The consolidation of manuals such as the examination standards is thought to be effective for sharing know-how cultivated in the above-mentioned way and continuously providing uniform examination services in the Myanmar IP Office.

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6.2.2.3 Proposals on the department in charge of copyrights in the Intellectual Property Office

【Proposal 15】Proposals on the department in charge of copyrights in the IP Office ① Strengthened policy and planning functions for promotion of measures for protection of copyright and related right ② Capacity building of staff in charge of copyright and related rights - With a view to promoting the development of culture and to achieving the goal of protecting rights of authors, etc. prescribed in the Copyright Law, the IP Office needs to take appropriate measures after grasping current use of copyrighted works in the country, issues concerning the protection of copyright, and infringements on copyright, etc. by such means as hearings of opinions from copyright holders and so forth. To this end, the IP Office has to strive to strengthen its design and planning functions in preparation of laws and institutional revisions.

- It is expected that the staff in charge of copyrights of the IP Office are experts with sufficient knowledge and experiences in terms of international treaties and domestic related laws and regulations in order to achieve the above-mentioned goals. Opportunities for capacity building need to be given systematically in order to train such staff by the IP Office.

- A method of complementing lack of human resources with expertise with employing external experts who are familiar with legal practices shall be considered in the early stage of the establishment of the IP Office.

6.2.3 Function Facilitation of Overall Intellectual Property System

6.2.3.1 Proposals for the System of Intellectual Property Exploitation

【Proposal 16】 Proposals on Enhancement of alliance and cooperation with relevant ministries for the function facilitation of IP system ① Alliance with relevant ministries in the development of national policy concerning IP ② Necessity of the function for relevant ministries to cooperate from the perspective of linkage between IP utilization and economic growth ③ Cooperation among relevant ministries indispensable for the promotion of international competitiveness

(1) Alliance with relevant ministries in the development of national policy concerning IP After the enactment of IP laws and establishment of IP Office, the main issue will be how to make it work in business and society. Therefore, the role of concerned ministries relating to

- 92 - business becomes quite important. Of course, functions such as effective enforcement against infringement have to be strengthened.

Additionally, Myanmar has to start working on policy and strategy relating to national development, industrial development and science and technology development. These policy and strategy should be discussed with a long-term vision, on how to effectively develop IP cycle such as creation, protection and exploitation together with IP education/training. Again, to make this IP cycle work, cooperation and collaboration among all factors should be made (see below). In this report, IP system means the system to make IP work by cooperation and collaboration with all stakeholders.

Cooperation Scheme in IP System

For that purpose, IP strategy and IP policy should be developed as a national policy. The practice of “Intellectual Property Strategy Strategy s (hearinafter reffered to as “IP Headquarters” of Japan that develops annual “Intellectual Property Strategic Program”3 may serve as an example for reference.

(2) Necessity of the function for relevant ministries to cooperate from the perspective of linkage between IP exploitation and economic growth For the economic development, it is important to increase GDP. For the growth of GDP, increase in investment (including government expenditure), domestic consumption, export, etc. is necessary. To develop domestic economy in Myanmar by FDI, for instance, the key factor is the cooperation of relevant ministries such as Ministry of Planning and National Development governing FDI, Ministry of Industry governing technology transfer and SME policies, and Ministry of Science and Technology. Myanmar has already established the committee for the

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SME development involving relevant ministries. Such cooperation among ministries is important for the future economic growth based on IP exploitation.

The relationship between IP system and technology transfer should be clearly understood because it is closely related to the economic development policy issues for Myanmar. IP system should be facilitated according to the technology that Myanmar wants to promote. In other words, IP system and economic policy are inter-related.

Firstly, it is quite essential to facilitate infrastructure in Myanmar for economic development. As infrastructure develops, manufacturing sector will grow. For example, export-oriented industry based on cheap labor will develop rapidly. It is important to realize that labor-intensive industry has two different aspects. While it generates jobs for many people in Myanmar, it does not lead to the development of value-added industry because technology level is low.

Of course, cheap labor contributes to increase international competitiveness in terms of slashing the cost. Labor-intensive industry based on cheap labor manufactures mass consumption products. For this type of industry, labor wage is considered as product costs. Therefore, slashing the cost is essential to stay competitive in a global market. However, as national economy and society develop, labor wage will hike accordingly. One can observe concrete examples of wage hike in China and Vietnam. In this regard, it is noted that Myanmar needs to develop industries starting with low-technology-based, to middle-technology-based and to high-technology based industry. Value-added industry is ultimate goal in Myanmar. Unless industries in Myanmar try to shift from low to advance technologies, she may mishandle wage hike issues and fail to cope with changes in technologies, and will consequently stay in the same situation where industry depends on cheap labor and low technology.

Therefore, one can clearly understand that even if Myanmar starts with low technology, it is not a goal. Myanmar needs to develop legal framework to secure shifting from low to high technology-based industry. In this regard, IP system is essential.

Then, how does IP system function? Technology is a lifeline for company so that low technology transfer means low risk for infringement. On the other hand, it would be a high risk for infringement when company transfers high technology. Therefore, in order to eliminate any risk involving technology transfer, company prefers to transfer technology between parent and child companies. Especially, transferring to 100% foreign-owned company is considered secure. The followings are concerns among companies in terms of technology transfer risk.

Technology leakage Inadequate legal remedies for infringement Low morale or work ethic among workers in terms of technology infringement

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High turnover rate and difficult to convey technology and know-how

Those concerns would be something to do with IP system (law and regulation), enforcement, IP awareness on job site, etc. Myanmar needs to establish IP system to make sure that technology would be appropriately protected. In doing so, technology transfer, more value-added technology (except for low technology), will be promoted. Of course, one should understand that IP system is not a sole determinant for technology transfer. For example, tax law (regulations on repatriation, transfer pricing, etc.), labor law (labor contract, indemnity, etc.), work ethic and strategy are also considered as important determinants.

(3) Cooperation among relevant ministries is indispensable for the promotion of international competitiveness To enhance international competitiveness, the indicators shown in “6.1.1.1” should be improved. Starting with the basic infrastructure such as establishment of relevant organization, development of laws and human resources; technology transfer, technology acquisition and fostering of skilled workers should be pursued. International competitiveness is attained not by the responsible ministry alone but by all-out endeavor of Myanmar.

6.2.3.2 Proposals on Enforcement

【Proposal 17】 Proposals on Enhancing enforcement at MOST ① Consideration of tightening the penalty for IP infringement under the IPR Laws ② Measures to cope with IP infringement - Set up the one-stop service center in English against IP infringement - Promote the alliance with relevant ministries to execute the effective and efficient enforcement

(1) Consideration of tightening the penalty for IP infringement under the IPR Laws Article 61 of the TRIPS Agreement provides that Members shall provide for criminal procedures and penalties to be applied at least in cases of willful trademark counterfeiting or copyright piracy on a commercial scale, and remedies available shall include imprisonment and/or monetary fines sufficient to provide a deterrent, consistently with the level of penalties applied for crimes of a corresponding gravity. In this respect, the draft of Copyright Act has provisions of copyright infringement acts and penalties, for instance, but the relation with monetary fines of existing Television and Video Law and Penal Code 1860 is not clear. Meanwhile, the draft of Trademark Act also has provisions of trademark infringement acts and penalties, however, not only the amount of monetary fine is not explicitly prescribed but the relation with existing Merchandize Marks Act 1889 and Penal Code 1860 is not clear. Therefore, we recommend the consistency of penalty provisions with TRIPS Agreement, and the provisions of other relevant laws should be checked and reviewed for their enhancement.

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There are some cases that show room for improvement. For instance, Chapter XX, Article 75 of the draft copyright law provides for the infringement and penalty, stipulating “violators of the law shall be punishable by imprisonment for a term not more than three years or by a fine of not more than five million Kyat, or by both.” However, its relation with the fine under the Television and Video Law or the Penal Code 1860 is not clear. Similarly, Chapter XX, Article 80 of the draft trademark law provides for the infringement and penalty, stipulating “violators of the law shall be punishable by imprisonment for a term not more than three years or by a fine, or by both.” It does not mention the amount of fine, and its relation with the Merchandise Marks Act 1878 or the Penal Code 1860 is not clear. Therefore, it is recommended to review the penalty in the perspective of consistency with other relevant laws and to consider stricter penalty.

(2) Measures to cope with IP infringement Following measures are suggested for MOST and IP Office to consider for the enforcement.

- Set up the one-stop service center in English against IP infringement To handle the issues of language and complex administrative procedures especially for foreign enterprises, it is recommended to set up the one-stop service center providing services in English. There are some alternatives for the function of such one-stop service.  Focus on the information service and reference to relevant organization  Include the handling of infringement issue

- Promote the alliance with relevant ministries to execute the effective and efficient enforcement Enhancement of the alliance with relevant ministries and agencies is suggested, such as information exchange with customs and police, cooperation with Ministry of Information concerning copyright, and cooperation with Ministry of Commerce concerning trademark.

【Proposal 18】 Proposals on Enhancing enforcement by customs at border control ① IPR registration at customs ② Facilitation of information exchange with enterprises ③ Transparency and Expertise regarding IP infringement examination of product ④ Promotion of education and training on IP for custom officers ⑤ Development of Import Suspension Motion Procedure ⑥ Tightening of penalty under Customs Act ⑦ Destruction of confiscated items ⑧ Inclusion of transit in the scope of control in addition to import/export

(1) Effective IPR registration at customs

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Registration of IPR at customs leads to the effective border control of infringement. Since Myanmar shares borders with many countries, it is preferred to store the registered IPR data in the database accessible from any customs. It would also be beneficial to construct the system shared among relevant ministries and agencies including customs by extending the trademark registration database (or connecting it with customs database), which is going to be established by IP Office, to cover the information for the determination of genuine goods.

(2) Facilitation of information exchange with enterprises When the customs inspects the infringing goods at border control, the information on the features of infringing goods and criterion for judgment is useful for the effective regulation. The customs is encouraged to facilitate the information provision from enterprises and to organize seminars for the staff with the cooperation of private sectors.

(3) Transparency and Expertise regarding IP infringement examination of product It is important to examine IP infringement (original or imitation) of the confiscated product. This examination should not be done at the discretion of customs officer. Rather, the examination process of IP infringement (original or imitation), in which Customs collaborates with IP Office, court and others has to be stipulated in regulation or rule. In doing this, transparency and expertise should be secured and it would lead to health market development.

(4) Promotion of education and training on IP for custom officers Identification of infringing goods is not easy. It requires periodical and systematic IP education and training with the cooperation of the IP Office and IP specialized lawyers.

(5) Development of Import Suspension Motion Procedure Article 51 of the TRIPS Agreement provides that Members shall adopt procedures to enable a right holder, who has valid grounds for suspecting that the importation of counterfeit trademark or pirated copyright goods may take place, to lodge an application for the suspension with the customs authorities of the release into free circulation of such goods. In addition, the procedures for import suspension motion are stipulated in Article 52 et seq. of the said agreement. In Myanmar, the Sea Customs Act 1878 provides for prohibition of import and export of counterfeit trademark goods or those affixed with false description, and prescribes the penalty for the said import and export. However, it seems they do not have a procedure for a trademark right holder to lodge an application for the suspension with the customs. Therefore, it is required to develop the procedure of import suspension motion by a right holder at the customs, in conformity with Article 51 et seq. of TRIPS Agreement.

(6) Tightening of penalty under Customs Act Chapter XVI, Article 167 (8) of the Sea Customs Act provides for the penalty for import/export

- 97 - of infringing goods, stipulating “any person concerned in any such offence shall be liable to a penalty not exceeding three times the value of the goods, or not exceeding one thousand rupees (approx. 1650 Yen).” Such penalty does not suit the current situation, and the penalty in conformity with international standard should be introduced.

(7) Destruction of confiscated items According to Article 184 of the Sea Customs Act, confiscated goods vest in the State. Article 183 stipulates “Whenever confiscation is authorized by this Act, the officer adjudging it shall give the owner of the goods an option to pay in lieu of confiscation such fine as the officer thinks fit.” Since the deterrent effect cannot be expected with this, it is important to destruct the confiscated infringing goods.

(8) Inclusion of transit in the scope of control in addition to import/export Chapter IV of the Sea Customs Act provides for prohibitions and restrictions of importation and exportation. Article 18 stipulates “No goods specified in the following clauses shall be brought, whether by land or sea, into the Union of Burma: goods having applied thereto a counterfeit trade-mark within the meaning of the Penal Code, or a false trade-description within the meaning of the Merchandise Marks Act.” In the present globalized economy with increasing number of Free Economic Zone and Free Port, some goods and articles from abroad may go through such areas as transit and be exported to other countries without being distributed in domestic market. Since there are cases of infringement in such zone or port, “transit” should be included in the scope of control in addition to the importation and exportation.

【Proposal 19】 Proposals on Enhancing enforcement by police in the market ① Tightening of criminal punishment ② Nurturing of IP expert in the police ③ Destruction of confiscated items ④ Transparency and Expertise regarding IP infringement examination of product ⑤ Promote the alliance with relevant organizations

(1) Tightening of criminal punishment Article 61 of the TRIPS Agreement stipulates that members shall provide for criminal procedures and penalties to be applied at least in cases of willful trademark counterfeiting or copyright piracy on a commercial scale and that remedies available shall include imprisonment and/or monetary fines sufficient to provide a deterrent, consistently with the level of penalties applied for crimes of a corresponding gravity. In this respect, Article 483 of the Penal Code 1860 stipulates that counterfeit trademark “shall be punished with imprisonment of either description for a term which may extend to two years, or with fine, or with both.” According to Article 486, “any persons who sell or exhibit the goods affixed with the counterfeit trademark

- 98 - for the purpose of sale, trade and manufacture shall be punished with imprisonment for a term not longer than one year or with fine, or with both,” but the amount of fine is not clear. Considering the fine of 10,000 Kyat (approx.1000 yen) against the violation of Television and Video Law, criminal fine under Penal Code would not be much different. Such amount of fine is set to protect the domestic industry in Myanmar, large majority of which is small enterprises (This is explicitly discussed in the recent revision of “Printing and Publishing Enterprise Law”). However, it should be noted that this amount of fine does not have any deterrent effect for foreign infringers.

“483.Whoever counterfeits any trademark or property mark used by any other person shall be punished with imprisonment of either description for a term which may extend to two years, or with fine, or with both.”

The above-mentioned criminal penalties do not satisfy the “imprisonment and/or monetary fines sufficient to provide a deterrent” under the Article 61 of the TRIPS Agreement. It is necessary to provide for the criminal penalties which fulfill the level required by the article.

(2) Nurturing of IP expert in the police Identification of infringing goods is not easy. It requires periodical and systematic IP education and training with the cooperation of IP Office and IP specialized lawyers.

(3) Destruction of confiscated items Articles 483 and 486 of the Penal Code do not stipulate the destruction of confiscated items. Express provision of destruction brings deterrent effect.

(4) Transparency and Expertise regarding IP infringement examination of product It is important to examine IP infringement (original or imitation) of the confiscated product. This examination should not be done at the discretion of the police officer. Rather, the examination process of IP infringement (original or imitation), in which police collaborates with IP Office, court and others has to be stipulated in regulation or rule. In doing this, transparency and expertise should besecured and it would lead to health market development.

(5) Promote the alliance with relevant organizations Promoting the alliance with relevant organizations such as IP Office, Customs and business associations is important. In doing so, it is highly encouraged to exchange information and to hold seminars with them.

【Proposal 20】 Proposals on Enhancement of handling by the court ① Establishment of courts which supervises IP ② IP training for judges

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③ Publication of IP cases and judicial statistics

(1) Establishment of courts which supervise IP As the utilization of IP progresses, the role played by the judicial part for protection of IP becomes more important. It is considered to be effective to establish courts which dedicatedly handle the protection of IP for the purpose of further enhancing and speeding up trials concerning cases over IP.

(2) IP training for judges It is obviously important to develop the system for settling IP disputes in judicial procedures. IP dispute requires judges or experts with advanced and expert knowledge. For the judgment of infringement and calculation of damages, high level of legal technical expertise is also necessary. Considering these factors, IP education and training for judges is important.

(3) Publication of IP cases and judicial statistics Court system of developing countries is hard to understand for foreign enterprises. In addition to the different language used and litigation procedures, effect or enforceability of lawsuit itself is not clear. What foreign enterprise and IP expert want to know is the information such as annual number of lawsuit, number of lawsuit involving foreign enterprise, time required to obtain judgment, major category of IP in dispute, ratio of plaintiff’s winning the case, amount of damages or fine, etc. In light of this situation, IP dispute related information and judicial statistics should be disclosed.

【Proposal 21】 Proposals on Establishment of Market Surveillance Bureau ① Effective control by market regulation function ② Facilitation of control in cooperation with industry association ③ Transparency and Expertise regarding IP infringement examination of product

(1) Effective control by market regulation function Police is the body to control the infringing goods in the market. Enhancement of market control is an urgent need under the current situation of Myanmar where infringing goods are widely spread in the market. Accordingly, in addition to the police, effective measure is required e.g. establishment of the institution in charge of quick regulation and control of counterfeit and pirated goods trade covering wider range of IP infringement. The cooperation between the said market control institution and police is indispensable. Market Surveillance Bureau of Vietnam may serve as a reference.

(2) Facilitation of control in cooperation with industry association Cooperation with the industry association facilitates the control of infringement in the market. As for the example of such industry groups, there are “Myanmar Printers and Publishers

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Association (MPPA) for printing industry, “Motion Picture Federation” for film industry, and “Music Federation” for music industry. For the effective enforcement, establishing the cooperation system with such industries is important, since voluntary regulation and rule making in the industry prevail as well as there is legal system and enforcement organization.

(3) Transparency and Expertise regarding IP infringement examination of product It is important to examine IP infringement (original or imitation) of the confiscated product. This examination should not be done at the discretion of the police officer. Rather, the examination process of IP infringement (original or imitation), in which police collaborates with IP Office, court and others has to be stipulated in regulation or rule. In doing this, transparency and expertise should be secured and it would lead to health market development.

6.2.3.3 Proposals for Central Control Board

【Proposal 22】 Proposals on Establishment of Central Control Board for more effective function of IP system

(1) Role and function of Central Control Board (CCB) There are 36 ministries in Myanmar. Japan has one office and 12 ministries, so Myanmar has three times more office than Japan. While the existence of many ministries means the functions are well divided, the cooperation among the ministries over the issues covering several ministries is uncertain. Of course, there is a case, for example, Central Committee for SME Development is launched with the President as its chairperson, in which 27 members participate from different ministries.

Myanmar also established “ASEAN Economic Committee” as a function across governmental organizations. The Committee is placed under the Ministry of Planning and National Development, and the responsibility of the chairperson is served by Vice Minister of MOST. Under the Committee, “IP Working Committee” toward acceding to APEC is established. This Committee has 15 working sectors, and MOST is in charge of IP and standardization. As a possible form of establishing “Central Control Board（CCB）” in Myanmar, the followings can be considered-

The following is the option for position of IP Office.

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(a) “Central Control Board（CCB）” under the President (chaired by Union President)

CCB functions well with this positioning as it has authority and power for decision-making (top-down). IP covers wide areas and is related to many different concerned Ministries, therefore, this seems to be the most effective positioning.

(b) “Control Board（CB）” as an independent ministry

This positioning is appropriate to work on specific, not national, issues that responsible ministry is concerned. The responsible Minister has authority and power for decision-making but this is not as authoritative as the above (a). Therefore, the performance of CB under this positioning would be influenced by relationships and political power among ministries.

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(c) “Control Board（CB）” under IP Office or MOST

This positioning is appropriate to work on specific, not national, issues that responsible ministry is concerned. The responsible Minister has authority and power for decision-making but this is not as authoritative as the above (a). In comparison with (b), the scope of handling territory is rather narrow because MOST or IP Office does not have direct connections with business activities. This seems difficult to implement policy and strategy without cooperation with other ministries relating to businesses. Therefore, the performance of CB under this positioning would be influenced by relationships and political power among ministries.

In order to examine where CCB should be positioned, either under the President or IP Office, or to make an independent ministry, the role and function have to be clarified (there is also an issue of securing finance). The authority of CCB and chain of command will differ depending on the positioning. For instance, the economic policy and national development plan which utilizes IP have to be addressed by a structure of “All Myanmar,” therefore CCB must be an organization having the authority of combining the relevant governmental organizations. On the other hand, in case of the theme based on respective challenges, it can be positioned under the competent ministry which is assumed to be most appropriate for handling the concerned challenge as “Control Board,” rather than having the “Central Control Board.” If IP is considered as the foundation of the national policy, the IP Strategy Headquarters of Japan can be used as a reference. As for the theme based on challenges, they can refer to the cooperation structure across ministries and agencies in ASEAN nations. However, the IP Strategy Headquarters of Japan designates strengthening of border control, enhancement of market control, fostering SMEs, etc. as the national strategy and takes measures for them. Therefore, it is important for Myanmar to clarify what is the national strategy, prepare the system for implementing it, and set up the “place” where it examines which government level should discuss and determine the policy.

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The followings are similar Organizations in ASEAN Member Countries and Japan for reference.

(i) The Action Program 168 (Vietnam) This program was implemented from 2006 to 2010 as Phase I. It was established to enhance the information exchange function among ministries regarding IP right. Under this program, the database and website were constructed, to which the ministries concerned posted the information on IP right, especially infringement cases.

Then, the program restarted as Phase II setting its term from 2012 to 2015. It aims at strengthening the IP system by preventing the infringement of IP right and taking effective countermeasures.

(ii) Committee 127 (Vietnam) This committee, “Steering Committee against Smuggling, Fake Foods and Trade Fraud,” was established under the Ministry of Trade in 2001 to cope with smuggling, fraud and unfair trade. The committee is capable of (a) assisting the Prime Minister to organize and coordinate concerned ministries for the countermeasure against smuggling, fraud and others; (b) directing and monitoring relevant ministries and agencies and regional people’s committee; (c) establishing the teams when needed for the direct inspection of smuggling and fraud, etc.

(iii) IP Task Force (Indonesia) National IP Task Force is a special committee, National Team on the Tackling of Infringements of IP Rights, established under Decree No.4 of 2006 for the purpose of reinforcement of IP protection. Headed by Coordinating Minister for Political, Legal and Security Affairs, the task force the secretary-general of which is Director General of DGIPR aims at (1) establishing the national policy against IP infringement; (2) developing the legal system against IP infringement; (3) establishing the strategy at relevant organizations against IP infringement; (4) coordinating enlightenment activities to cope with IP infringement; (5) strengthening international cooperation against IP infringement.

However, it is pointed out that the substantial activities of the task force is restricted by following reasons; (i) expansion of members, (ii) increased difficulty in the coordination among members (government organizations) due to longer time required for getting internal approvals after information collection and making adjustment1.

(iv) National IPRs Center of Enforcement (NICE) (Thailand) National IPRs Center of Enforcement (NICE) was established in March 2013 by “Department of Intellectual Property (DIP)” for enhancing the control over IPR infringement with the cooperation of Royal Thai Police. The secretariat is under DIP, and other government

- 104 - organizations such as the police and the customs are the members. It also individually serves Thai private organizations as well as American or Japanese private organizations.

(v) IP Strategy Headquarters (Japan) IP Strategy Headquarters was established in the Cabinet according to Article 24 of “Intellectual Property Basic Act” in 2003. The Prime Minister serves as the Director-General of the IP Strategy Headquarters. The Headquarters has the following five objectives; (a) enhancement of IP policy and measures abroad, (b) enhancement of border control, (c) enhancement of market control, (d) nurturing of IP awareness of SMEs and venture companies, and (e) cooperation between the public and private sectors.

6.2.3.4 Proposals for enactment of Intellectual Property fundamental law

【Proposal 23】Proposals on enactment of IP fundamental law To enact laws like IP fundamental law in Japan, and set up organization to form nationwide IP policy based on such IP fundamental law (e.g. IPStrategy Headquarters in Japan).

Myanmar should enact its fundamental law regarding IP from the perspective of development of the foundation to further make the IP system on nationwide basis effective. Such fundamental law, like in Japan, should (i) set forth the purpose of strengthening international competitiveness of Myanmar’s industry etc, (ii) clarify the content and kinds of IP which Myanmar should protect,(iii) confirm the responsibilities of national government, local governments, universities, etc. and business operators, and (iv) set up organization to play a role to form nationwide IP policy (e.g. IP Strategy Headquarters in Japan).

The establishment of such organization enables Myanmar to develop nationwide IP system in organic and integrated way. Also, the establishment of such organization enables various ministries involving IP policy to collaborate with each other.

6.2.3.5 Proposals for enactment of trade secret protection law

【Proposal 24】Proposals on enactment of trade secret protection law To enact trade secret protection law and, under such law, set forth (i) definition and requirement of trade secret, (ii) restriction with regard to unfair acquire, disclosure and use etc. () of trade secret, (iii) civil remedies (injunctive relief and compensation of damages etc.) and (iv) criminal sanction.

In Myanmar, from the perspective of proactive promotion of investment (licensing out of technology) into Myanmar by foreign companies etc. in the future in order to increase

- 105 - economic power and international competitiveness, it is quite necessary to develop legal system with regard to trade secret law including technical information licensed out to Myanmar. In concrete, Myanmar should set forth the definition and requirement of trade secret, restriction of misappropriation (unfair acquisition, disclosure and use) and civil remedies and criminal sanctions in case trade secret is misappropriated.

6.2.3.6 Proposals on establishment of Intellectual Property related organizations

【Proposal 25】Proposals on establishment of IP related organizations ① Establishment of attorneys organization ② Establishment of private IP-related organizations ③ Establishment of copyright collective management organization

(1) Establishment of attorneys organization - The improvement of grade of attorneys and their services contributes not only to users but also to communications between the Myanmar IP Office and attorneys.

- From this viewpoint, as a medium and long term goal, it might be effective to establish an attorneys organization for the purpose of enhancing capacities of attorneys through providing them with guidance, supervision and trainings, and communicating with them.

- Moreover, clarification of the qualifications as attorneys and introduction of an examination system might be effective as a system to improve attorneys’ grade and services.

- The Myanmar IP Office is expected to be able to promote the IP system even wider under such cooperation with this attorneys organization by carrying out promotion activities thereof.

(2) Establishment of private IP-related organizations - In order to support sustainable economic development focusing on the IP system, the system should be actively utilized by users and the system itself needs to be improved in accordance with maturity of Myanmar’s industries and market trends. It is essential to listen to opinions of users in considering such systemic improvement.

- It is necessary to form a platform for smooth communications between the Myanmar IP Office which oversees IP-related laws and users in order to collect opinions on users’ needs. To this end, the establishment of private IP-related organizations is considered to be effective.

- The Myanmar IP Office is expected to be able to promote the IP system even wider in cooperation with such organizations.

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- The JPO is, toward the establishment of attorneys organization and private IP-related organizations in Myanmar or after they have been established, prepared to provide on-site trainings by dispatching experts or inviting related employees to Japan with a view to improving the functions of such organizations and the capacities of their members.

(3) Establishment of Copyright Collective Management Organization - The establishment of an appropriate collective management system of copyright is a vital issue in promoting of copyrighted works and implementing effective measures against piracy. To achieve this, it is required to provide support for establishing collective management organization and advice and guidance on its duties.

6.2.3.7 Proposals on Promotion of PR activities and Human Resources Development

【Proposal 26】Proposals on Promotion of PR activities and Human Resources Development of the Staff in IP Related Authorities - It is important to promote PR activities of IP to foster industrial development of the country and foreign investments.

- It is also important to carry out PR activities in accordance with the degree of proficiency, for example, in the short term, improvement of knowledge on IP in universities, public research institutions and SMEs by holding seminars, and practice of IP management and operation making use of technology and in the medium and long terms.

- JPO is prepared to cooperate in effective PR activities in Myanmar by dispatching experts and sharing experiences and successful cases of Japan .

- In order to secure effectiveness of the IP system, it is necessary to provide employees of the Myanmar IP Office with trainings and also develop human resources in IP related authorities such as the customs and the police in accordance with their functions and needs.

- The JPO is prepared to provide on-site trainings by dispatching experts from Japan to Myanmar and by inviting related staff from Myanmar to Japan.

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Appendix 1 Reports of the Dialogues

APPENDIX 1 Reports of the Dialogues1

1. 1st Dialogue ( 8-9 October,2013 )

(1) Agenda

The colored words indicate the matters which the preparation, report, and guidance and so forth were made by “Support Team for Organizing Myanmar’s Intellectual Property System” (hereinafter referred to as “JPO Support Team”) sponsored by Director of International Cooperation Division of JPO. The non-colored words indicate the ones jointly conducted by JPO Support Team and Consultant Team.

■1 Intellectual Property Law Japan Patent Office

1. General (1) Outline of the current structure of Myanmar Government Which are current intellectual property (hereinafter referred to as “IP”) related organization and responsible ministry of each (IP related) law in particular?

(2) Current framework to establish new IP system and IP law in Myanmar (a) Each member’s role (b) Cooperation with police, customs, and judiciary

2. Draft IP Law (1) Current status of IP system and IP law in Myanmar Statistics on the number of registration in current registration system where trademark is practically protected (2) Outlines of the latest IP law draft as well as major differences between the latest draft and 10th draft (a) Patentable subject matter (e.g., isolated natural substances, use invention) (b) Deferent of publishing patent application (c) Introducing utility model system (d) The major difference between patent and utility model (a) Whether substantive examination will be conducted for the utility model application (b) Whether report of utility model technical opinion system will be adopted in case there is non-substantive examination system in utility model (e) Spare-parts provision in industrial design law (f) Transitional measure from current registration system to new trademark law (g) Whether the relative grounds of refusal will be examined in examining trademark applications (3) Detail processes for enacting draft IP law (4) Relationships between general law (e.g., civil law, civil procedure law, criminal law, administrative procedure law) and IP law as a special law (a) Capacity to hold rights or undertake procedures (e.g., whether corporation itself can apply for a patent or not) (b) Petition/ Appeal (e.g., how different between general petition system and IP petition system) (c) Whether the IP law is much coordinated with general law or not. What happens if provisions of IP law

1 The 1st Dialogue was held in early October of 2013, the 2nd Dialogue in early December of 2013, and the 3rd Dialogue in late January of 2014, respectively, and the draft bill continues to be amended afterward. Please note that what is written here might be changed in the final draft.

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do not match with that of general law? (5) Detail processes for establishing administrative rules under IP law (6) Relationships between ‘law’ and administrative rules (a) Is there any guidelines which provisions should be stipulated in law or can be stipulated in administrative rules? (b) How the legal status of examination guidelines will be (7) Progress of the draft administrative rule (8) Current status of enforcement agencies in Myanmar (e.g., police, customs, courts) (a) Organizations, roles, and the number of offices in each agency (b) Is it possible to do administrative enforcement? (c) Relationships between central government and local/regional government (d) The power of personnel issues in court (e.g., whether local/regional government or Supreme Court have the power over personnel issues of district courts.)

Agency for Cultural Affairs

1. Amendment to Copyright Law (Please see attached file for more details.) (a) The meaning of “the exclusive right of communication to the public” (Art. 11) (b) The authorship of the person who orders the other person to take a photograph (Art. 15) (c) Rules regarding the equitable remuneration (Art. 62) (d) Effect caused by the registration of copyright (Art. 39)

2.Use of copyrighted works (Copyright Collective Management, distribution of copyrighted works and etc.) (a) Recent situation of protection and encouragement for copyright holders (or creators) (b) Protection of copyright and neighboring rights at the initiative of copyright holder (i.e. Establishment of copyright organizations ) (c) Situation of content industries (film, music, publishing, broadcasting and etc.) (d) Major business of content industry (e) Measure taken by the government for promoting contents industries (f) Situation of collective management of copyright (i) Issues in copyright management by copyright holders (ii) Establishment of collective management organization (CMO), Copyrighted works to be managed by CMO, Proportion of organized copyright holders, Membership of related international associations (CISAC (right of performance), BIEM (mechanical right) and etc.) (iii) Management of CMO(transparency, accountability, trust agreement, management of copyrighted works (date base etc.), permission for users, collection of loyalty, distribution of loyalty (iv) Measure against piracy (g) Major users’ needs for use of copyright (Industry, broadcasting organizations, wire broadcasting organizations, producer of phonogram, concert hall, streaming service, rental, Karaoke, mobile phone application, and etc.)

3. Others Copyright protection on the Internet (The draft of Amendment to Copyright Law shall accord with the copyright protection stipulated on TRIPS Agreement. In addition The right of communication to the public (Art. 11), the right of the making available to the public of performer and producer of phonogram (Art. 30 and 32), moral right of performer shall be granted, and hence copyright protection with the standard of WIPO Internet Treaties may be introduced partially.)

■2 & 3 Role and Functions of Intellectual Property Office

1. Please explain current activities of Ministries concerned in the light of Myanmar IP Office

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(a) Legislation matter related to IP Office (b) Policy and measures for human development (c) Policy and measures for SMEs development (d) Policy and measures for R&D and Innovation (e) Policy and measures for culture enhancement

2. Please explain Recent Discussion and Issues on Myanmar IP Office (a) Outline of IP Office (b) Organizational structure (c) Role and Functions (i) Registration (ii) Human Resource and Development (d) Budget and Funding (e) IP Legal Framework (i) Law, regulations, rules and guidelines (f) Processes to decide the personnel in each department/ division (g) Processes to decide the budget for IP Office

3. What are Related Issues regarding Myanmar IP Office (1) Discussion in Business world (2) Discussion in Academia

4. Relationship between the establishment of IP Office and law/ administrative rules (1) Do you need to amend law in order to establish IP Office or IP Court?

5. Current work plan of IP Office (a) Receiving applications (b) Administrative management of the file-wrapper of applications (c) Formality examination (d) Data entry (e.g., management system of master data (or original data) of applications) (e) Substantive examination (f) Whether it is possible to conduct examination in English (g) Document dispatching (h) Publication of Gazette (i) Consultation counter for IP filing (j) IP library (k) Automation in general

■4 Intellectual Property Strategy

1. What is your National Development Plan for Socio-Economic Development?

2. What is your Policy and Law Making Process in terms of IPR?

3. What are Related Laws and Regulations in the field of science and technology?

4. Who are major R&D and Innovation players in Myanmar?

5. What is your policy and measures taken to promote Industry-university cooperation? (1) Outlines and list of universities which have department of science and technologies (2) Outlines and list of national institutes which engage in R & D (3) Policy and measures taken to promote IP environment in universities

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6. What is your policy and measures taken to promote SMEs (includes statistics)?

7. Possibilities to introduce IP attorneys/ IP agents system

8. Possibilities to establish IP related organization by private sector

9. What is your Anti-counterfeiting measures ? (1) Statistics on circulation/ distribution of anti-counterfeiting goods (2) Enforcement Organs (customs, police, MOST, etc.)

10. Copyright Enforcement (1) Situation of infringement on copyright and neighboring rights (2) Settlement of dispute regarding copyright and neighboring rights (3) Piracy on the Internet (4) Summary of Copyright system related settlement of dispute (5) Function and competence of the enforcement authorities (IPR Administration’s duty)

11. Raising Awareness on Copyright (1) People’s awareness about copyright (2) Measure for raising awareness at the initiative of the government (3) Measure for raising awareness at the initiative of private sectors

■5 Human resource and development

1. Please explain current human development activities of Ministries concerned in the light of Myanmar IP Office (a) Law and regulations on human development (b) Policy and measures for human development (c) Human development at University and Higher Education (d) Human development for SMEs (e) Human development for Government offices

2. What should be done to promote human development in Myanmar?

3. Please explain the process of recruiting IP Office staffs (1) Possibilities to recruit foreign IP examiners

4. What are prospective competencies for IP Office staffs (administrative officer/ examiner/ manager) ?

5. Please explain prospective career path of IP Office staffs.

6. Current plan of training program for IP Office staffs (1) Whether or not will the training program include the dispatch to foreign organization? (2) Do you encourage foreign experts to deliver lecturers to Myanmar IP Office?

(2) The Attendants

*The upper part from a separator line: the participants from “IP support Team” and IP-related Ministries in Myanmar; the lower one: the staff of IP Section/MOST. Both are put in random order. *Note that the list of participants below does not necessarily correspond to the actual state.

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No. Name Position Department/Organization Department of Advanced Science and Technology, 1 Mr. Kyaw Zwa Soe Director General Ministry of Science and Technology Law Department Yangon University, Ministry of 2 Dr. Than Nwe Advisor Education Law Department Yangon University, Ministry of 3 Dr. Khin Mar Yi Professor Education

4 Aung Naing Director Union Attorney General Office

5 Khin Moe Aye Ministry of Commerce

6 Thein Aung Senior Associate Law Firm, Myanmar Trademark and Patent Law Firm

Copyright and Registration Division, Ministry of 7 Kyaw Moe Thu Assistant Director Information

8 Dr. Sein Win General Secretary Myanmar Printers & Publishers Association

Union of Myanmar Federation of Chambers of 9 Dr. Myo Thet Vice President Commerce and Industry Senior 10 U Than Maung KELVIN CHIA Yangon Ltd.(International Law Firm) Associate/Advocate Copyright and Registration Division, Ministry of 11 Myint Myat Thida Assistant Staff Officer Information Copyright and Registration Division, Ministry of 12 Yamin Hlaing Assistant Staff Officer Information

13 Dr. Moe Moe Thwe Deputy Director IP Section, Ministry of Science and Technology

14 Nay Aung Myo Assistant Lecturer ditto

15 Lin Aung Sue Assistant Director ditto

16 Daw Yimon Hlaing Tutor ditto

17 Thi Thi Han Demonstrator ditto

18 Ain Ain Win Kyaw Assistant Lecturer ditto

19 Dr. Phyu Hnin Khaing Deputy Director ditto

20 Dr. Toe Myat Nu Deputy Director ditto

21 Dr. Khin Sandar Win Assistant Director ditto

22 Dr. Kyi Pyar Moe Assistant Director ditto

23 Dr. Aye Aye Maw Assistant Director ditto

24 Dr. Hnin N we Aye Assistant Director ditto

25 Dr. Seint Thandar Tun Deputy Director ditto

26 U Aya Mying Naing Demonstrator ditto

27 Dr. May Phyo Thwe Deputy Director ditto

28 Dr. Win Mar Oo Deputy Director ditto

29 Daw Wai Le Yi Assistant Director ditto

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(3) Summary of the 1st Dialogue

(i) 8 October, 2013

 There are 36 Government Ministries currently and major Ministries, which are now involving in establishment of IP system in Myanmar, are as follows. -Ministry of home affairs -Ministry of agriculture and irrigation -Ministry of education -Ministry of commerce -Ministry of industry -Ministry of information

 Currently, the registration for trademark is dealt by the Ministry of Agriculture and Irrigation. Not limited to trademark registration, there is currently only one Act for registration of any kind of rights. In other words, there is no specific law to set forth trademark registration.

 In order to promote establishment of IP law and system in Myanmar, Support Team was launched.  Support Team members are comprised of officers in various Ministries, university professors, attorneys in private practice etc. For details, Support Team members were introduced by using the document titled “Establishment of Myanmar Intellectual Property Administration System (Support Team Members)” .

 In the course of introduction of IP system in Myanmar, it is quite important to educate human resource. One of quite useful places to educate is the law department in the university. Law department will be a future training center, not only for law students, to collaborate with various ministries such as ministry of commerce for trademark matter. The idea to collaborate for spreading the IP information trademark should be adopted in order to promote the trade law and practice.  Private sectors also play quite important role for establishing and wide-spreading IP system in Myanmar. For example, companies including SME, attorneys, advocates should be accustomed to IP system and use IP in the future.

 The highest is the Supreme Court of the Union.  As to High Court of the Region or the State, there are three kinds of courts: (i) Court of Self-Administered Division, (ii) Court of Self-Administered Zone, and (iii) District Court. Also, there are

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two kinds of courts: (a) Township Court and (b) Special Court under the Court of Self-Administered Zone.  As to the intellectual property infringement cases, it is now in the process of reviewing jurisdiction although the cases might be brought before Township Courts or District Courts in each area.  As to criminal cases on intellectual property rights, the right holder may bring the case to the police under the Township Court and/or District Court in order to seek pecuniary sanction.

 In Myanmar, custom department and police are working together to prevent counterfeit and piracy.  Major of counterfeit and piracy goods are trademark infringing goods, which should be subject to the Registration Act in 1908 and the Penal Code.  In practice, the entity who seeks remedy for trademark infringement reports the information of such infringement to the police which are under control of the Township Court. Police may dispose infringing goods, order cease and desist of infringement.  As of now, there is no specific law with regard to police’s enforcement against counterfeit.  Boarder seizure by customs may be very efficient by constituting special team to inspect and take action against counterfeit goods which are imported in Myanmar from China, Thailand and other bordering countries.  Since boarder seizure of counterfeit is quite important, Myanmar government should try to educate custom officers in the future. Specifically, the customs should educate officers how to investigate, how to find whether the accused products are counterfeit etc.  In order to effectively prevent counterfeit goods, not only custom office but also judiciary system (i.e. courts) is also important.

 As to copyright enforcement, police and customs action are used although court procedure tends to be avoided by users (copyright holders).  As to trademark, there are substantive amount of registration in each year. For statistics, number of trademark registration was explained by the document titled “Cooperation Regarding the Establishment of Myanmar’s IPR Administration System”.  In Myanmar, there would be two ways for seeking trademark protection: one is by registration of trademark and another is through use of trademark.

 As of now, IP Section of MOST is drafting Eleventh Draft of IP laws.  Definition of Invention is stipulated in the Patent Draft law..  The patentability requirement is usual as three criteria, which is new, innovative and industrially applicable.  As to industrial applicability, such applicability covers industries such as agriculture, livestock and fisheries.

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 Myanmar government should adopt the effective system to examine patent application.  As to utility model, there would not be substantive examination system. In this regard, in order to prevent abuse of utility model right which is not subject to substantive examination, one of the appropriate ideas would be to adopt technical opinion/report system as Japan. In Japan, utility model holder is required to apply and obtain technical opinion/report by JPO as premise before enforcing such utility model right against accused infringer.

 At the stage of introducing new trademark registration system, there would be serious issues that original owner of trademark (without registration) who has used the trademark may be infringer of newly registered trademark who is applied and obtained by third party under the new trademark law. There would be original owner of trademark who does not have knowledge on new trademark law and then fails to obtain registration on his or her trademark.  As of now, the draft of trademark law adopts transition period of three years for current trademark registrant, so that current trademark registrants under Act for the registration may apply and obtain trademark registration under the new trademark law.  The new trademark law would adopt the first-to-file system. In this regard, in order to try to secure the status of current trademark registrant under the Act of Registration, MOSTis considering that the trademark applicant who was former trademark registrant under the Act for the registration should be the first to file an application.  In any event, this issue would be serious and then should be discussed in more detail.

 Under the current draft law, industrial design application is substantively examined.  The responsible ministry for drafting the law is attorney general’s office. This draft law is, after finalized by Attorney General’s Office, then sent to the Cabinet and adopted by the Parliament. This draft law is likely to be submitted in next session of the Parliament.

 IP Section of MOST ’s plan on role and functions of IP Office was explained by using the document titled “Dialogue Agenda (2 & 3 & 5) Role and Functions of Intellectual Property Office & Human Resource Development”.  MOST is now proposing single IP office for Myanmar.  IP office will conduct the registrations of the specific IP rights (e.g. Trademark, Industrial design and geographical indications).  IP Section of MOST is now drafting IP law only for Trademark, Industrial Design, Copyright and Patent. MOST will propose that the IP office will handle all the registration.  IP office will be under one of the ministry, most probably under the Ministry of Science and Technology. Director General with highest authorities will control all these matters and there will be an advisory board to set up the IP policy and administrative plan for future.

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 The roles and functions or IP office are (i) IP department, (ii) policy and strategic planning department, (iii) education and awareness department, and (iv) financial administration department.  The main department is IP department to be responsible for examination and registrations.  The policy and planning department will be taking care of national policy and strategic plan for the IP office. The education and awareness department is in relation to the IP knowledge and education of all the sectors. The financial administration department is established for dealing with financial matter such as the budget and staff management.  Since last months, MOST started training staffs for IP related matters and future examiners who will examine IP application.

 As to difference between registrar and examiner, the registrar is highly ranked officer. On the other hand, examiner examines the IP application and then submits technical report to registrar. After that, registrar will make competent examination, double check and final decision whether or not application is granted or rejected.

 Japanese supporting team is mainly comprised of three groups: (i) legal supporting group, (ii) workflow supporting group, and (iii) intellectual property strategy supporting group.  Japan side proposed that it would be productive to discuss by and between each group (i) – (iii) for each topics.  In the next meeting, Japan and Myanmar will invite and introduce members for each group and then make substantive dialogue.

 Strategy for establishment of IP System in Myanmar was explained by using the documents titled as “Establishment of proper IP System for Economic Development of Myanmar”.  In essence, Myanmar’s national strategy is comprised of four stages: (i) developing IP system infrastructure, (ii) promoting education and awareness in all sectors, (iii) encouraging IP creation, strengthening IP protection, and promoting IP utilization and (iv) promoting technology and knowledge based investment and economic growth.

 As member of ASEAN, Myanmar plans to cooperate with other member states, to promote the technology etc. Myanmar will actively take part in ASEAN IP Action Plan as well. Myanmar introduced ASEAN Action Plan into its IP strategic program. Myanmar needs to encourage and develop various IP related association, member organization with the IP office.

 The necessity to raise IP awareness in Myanmar was explained by using the document titled as “IP

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Awareness Raising in Myanmar”.  Myanmar government now tries to promote IP education. As of now, people in Myanmar are weak in IP knowledge. Even those who become staffs in IP office do not have enough knowledge in IP.  Considering this situation, it is quite important that the IP office, university, research centers, SME and industries should jointly disseminate IP knowledge.  MOSTplans to raise educational awareness by making various campaigns.

 Measures to be taken for protection and promotion of SMEs in Myanmar were explained by using the document titled as “How to promote SMEs by IP”.  In order to promote technology and knowledge based IP infrastructure, MOSTt intends to encourage the SME to collaborate with foreign companies with regard to developing and introducing technology in Myanmar.

(ii) 9 October, 2013

Why trademark registration is handled under Registration Act?  Registration Act is originally intended to handle registrations for the land titles. Trademark registration is under the subtitle of the optional registration.  It is a trademark users option whether he/she registers his/her trademark. Proper transaction on intellectual property must be registrable document, but the trademark registration is optional registration under Section 17and 18 of the Registration Act.

Drafting rules and regulations to implement IP Laws  Regarding to drafting regulations, Ministry of Science and Technology (“the MOST”) has already confirmed with World Intellectual Property Organization (“WIPO”) that it will help to draft rules and regulations for implementing new IP laws.  Rules and regulations must be notified after 90 days the law has been enacted, but extension can be granted by the Parliament by an appropriate request.  The deadline to notify rule and regulations is within 90 days after the effective date of the law. Extension of the 90-day deadline can be given, but the law is already effective. Therefore, rules and regulations have to be implemented as soon as possible, because law is already in force.

Conflict between Law and Rules/Regulations  The rules and regulation must implement the main aim and object of the mother law. If that is deviated from the object of the mother law, that could be quashed even though it has been implemented. If the rules and regulation is not consistent with the aim and object of the main act, it has to be quashed, and to be amended.  When rules and regulations exceed or go beyond the provisions of the mother law, they should be null

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and void according Section 97 of Constitution. If the law has to be amended due to the necessity, you must start it from the Parliament.  Experience in drafting or amending law in Japan, Japan Patent Office (“JPO”) recommends that the MOST should address drafting rules and regulations in parallel with that of laws in order for rules and regulations to include the administrative structure of the IP office and internal process.

Procedure for setting up IP Office and Discretion of President  According to Constitution, the establishment of IP Office is administrative matter. Approval from the president’s office is not required. The President will notify to establish such an organization; however, he needs detail provisions of law. This means that, in the IP laws, that is Patent Law, Industrial Design Law, Trademark Law andCopyright law, authority will be conferred to the president, and then the president will notify the establishment.  It is up to the discretion of the President’s Office to establish of the administrative body. That will be also by the recommendation by the Union Parliament.  It depends on President’s Office decision what type of IP office, whether it will be totally independent organization or be under one kind of Ministry such as the MOST. If IP Office is preferred to be under one Ministry under mother law, the Ministry has to establish IP office, and Myanmar needs to decide what kind of organization, whether they needs an organization empowered by the President, or whether it could be under the MOST. Myanmar has to decide first how the organization should be.  President’s discretion means that which department, which ministry, or which type of person is suitable for the part. The newly establish body is maybe approved by the decision of the president; however, the President will consider and check with other Ministry which is concerned IP matters. The President will check which ministry will be most suitable for the activities of IP office.  President’s discretion is given by the Constitution and the respective law. The aim of the Trademark law is to protect small and medium-sized enterprise (“SME”) and to protect IP right. The President will check which ministry will be concerned to protect SME and IP right. The President will choose the MOST, Ministry of Education, Ministry of Information. Those are concerned ministry. He will put minister or deputy, and choose the appropriate person.  First IP Law has to be submitted to Parliament. It will discuss the Law and which ministry is appropriate for the matter for the establishment of IP office. After the promulgation of this law, the Government has power to manage who is the appropriate person according to the law. The law has already been discussed by the Parliament, and at that time the President has power to manage those necessary things, including establishment of the IP office and appropriate person to be appointed by the power of the president.  President’s discretion does not mean that president decides arbitrarily. The president has many advisors and ministers. President is the head of the executive.

Patent: Definition of “a person having ordinary skill in the art”  In the draft of Patent Law, “A person having ordinary skill in the art” is defined as a person who has an expertise in the field of the claimed invention i.e. equivalent to the average expertise on that field that

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exists in Myanmar. This definition might set limitation that the prior arts should be found only in Myanmar.

Patent: Issues regarding Registrar for Patent  The Patent Draft Law includes the clause that if a registrar has changed his/her mind, he/she should have strong reason to change his/her mind. This means the registrar should have strong evidence to change his/her mind.  In Japan, if somebody wants to nullify the patent after it is granted, he/she has to start administrative trial. Otherwise, no one can cancel the patent. The Paten Draft Law seems to give too much authority to a registrar.  The Patent Draft Law includes the clause that the registrar shall suspend the revocation of patent independently during the litigation. This may mean the defendant of infringement litigation cannot argue invalidity of the patent. On the other hand another clause stipulates that the court will handle invalidity issue.

Industrial Design: Prior Art of Industrial Design  The draft of the Industrial design Law provides that prior art of design is a design which is inside only in Myanmar; however, industrial design laws in the most of countries, including Japan, the design should be new from worldwide aspect. It should be suggested that novelty of design should be examine considering the design not only in Myanmar but also in the world.

Trademark: Protection of well-known/famous marks  A well-known mark protection is required under Paris Convention. This means that a well-known mark can be protected without registration. It is necessary to include this kind of provision in the draft of Trademark Law.  In the draft, the provisions for registered and unregistered mark have been added. Although the responsible Union Ministry has to determine what is well-known mark, but it has not done yet.  Identification of well-known mark is very difficult even in Japan. It would be possible to collect list of well-known mark from other countries.  The problem is whether “well-known” requirement should be considered in territory or market of Myanmar, or around all the member states.  In general, the courts decide whether a mark is well-known or not.  Trademark: Prior Use Right in Trademark  The draft of Patent Law has prior use right provision; however, the Trademark Law does not. A trademark user who is using his/her trademark based on current common law system would like to continue to use the trademark after new Trademark Law has enacted. It seems that there is no consistence between the parent law and the TM law.  Japan had similar situation with Myanmar when protection for retail service mark was introduced. Japan adopted prior use right in the situation where the new system was introduced. Prior use right was

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intended to solve the situation where someone who has been using certain trademark, and some other people start to use the same trademark after the new system introduced.  If people rush to register their trademark after Trademark Law has been enacted, multiple applications for the same trademark may be filed. Trademark Law in Japan has lottery system to solve the situation where two or more applications for trademark registration relating to identical or similar trademarks which are to be used in connection with identical or similar goods or services have been filed on the same date.  A person who filed the trademark which is identical or similar to the prior user’s trademark will obtain a trademark right for his/her mark under the new law. On the other hand, prior use right allow a trademark user who has been using his/her trademark long before the new law has been enacted to continue to use his/her trademark. There is no conflict or contradiction between these two people.

＜Plan for Setting up IP Office and IP System＞ Phase of Proposed Organization Structure/Plan  MOST proposes single IP Office, which would be the most proper system to encourage and promote the IP system. The other option is to put IP Office under one responsible ministry the MOST. The MOST is now planning to have more staff for IP promotion. The MOST needs more staff that has science and technological background. The MOST will let them take part in national IP examiners.  The plan for organization structure has already been submitted to the Minister of the MOST. The plan has already been approved by the Minister. The MOST gave a presentation before the Prime Minister. At that time, the Prime Minister decided the small IP office not under the MOST. Ministry of Commerce and the MOST and other Ministries was included in discussion for making approval for that proposal  This year, the MOST also had a plan to propose again to the Government. The MOST invited all related Ministry and discussed the proposed model, analyzed the current situation and policy of Myanmar.  When the Director General of WIPO visited Myanmar, the MOST had a chance to participate in the discussion meeting, and decided proposal for Myanmar. After the discussion, the Minister proposed single IP office.  The MOST is considering enough number of staff would be needed. The Minister of the MOST at that time decided to recruit more people we proposed.  The drafts of law are now in the final stage. Before the drafts are submitted to the parliament, we will start planning and decide to employ more people.  The MOST expects the proper IP system in Myanmar, and shares the knowledge and expertise with the other Ministry to set up single IP office in Myanmar; however, it depends on decisions of the parliament. There will be debate, different idea. The MOST strongly makes and supports the plan that the MOST sets up the IP Office in Myanmar.  Appeal Procedure for application is now being considered to handle by IP Office. Proposal from WIPO is that to include appeal procedure under the IP department; however, when the MOST revised and reviewed the former structure, it determined that the IP department should take care more strongly for registration of IP.

Allocation of Staff

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 Japanese Copyright Office handles registration of copyright with small number of staff. The registration procedure is very simple. Not so many staff is required to deal with normal registrations.  The MOST understands that more will be necessary than it has currently planned. The MOST is taking care of this problem. The current plan of staff allocation considers only current situation of IP system. The MOST recognizes the current staff allocation plan is not appropriate, and is planning to add more staff.

Locations of IP Office  There are two options on the location of the main IP office. One is in Nay Pyi Taw, the other is in Yangon. Nay Pyi Taw is first priority because all of the related Ministries are there; however, when considering the business area and communication, Yangon should be chosen as the location for main IP Office.

Staff Recruiting  At the beginning stage, the MOST is responsible to recruit the staff. The MOST is planning to allocate the current staff in IP Department to IP Office. The staff was not recruited, but voluntarily joined. Therefore, the MOST has to choose them according to the criteria needed for the specific areas. The MOST has proposed what qualification is required for the staff. The MOST has already been planning to recruit more, especially for the Department, Sections which are more local, or the office for registration.  The MOST has already put advertisement in the newspaper to recruit lawyers working in IP Department. We have already advertised in the newspaper and these lawyers who will work in the Department and also engage in other necessary thing regarding future work in the IP office. The MOST expects 15 lawyers will join. Since some more experts will have to work in IP Office, the MOST will have to recruit people from outside.  The MOST is going to added two lawyers for IP procedure. Other lawyers are especially for teaching and training awareness for each division. The MOST proposes to employ 15 lawyers.  It is not sure so far whether experts from foreign countries can be in charge of the examination in Myanmar from the legal perspective.

Association for IP Lawyers  In Myanmar, there is no association for IP lawyers. There should be the system to identify the patent attorney. To set up an association, registration with the Government is required.  There are 2 associations related to IP: the first one is ASEAN IP Association, another one is Asian Patent Attorney Association. Ten members have joined form Myanmar. Members are already recruited for APAA as well as ASEAN IP Association.

IP Education  The professor of University has a plan to open the new course related IP law. A diploma of IP law is one of the courses for the LLM students who are taking commercial law specialization, civil law specialization and international law specialization. They have to learn one of the questions of the intellectual property, and intellectual property law is one of the courses of the international law, trade law.

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Then, for the diploma in business law, students have to learn one of the courses in IP law.  Regarding graduate student program, university accepts any students. The teaching hour is 7 to 9 in the morning. It takes one year program and examination, and they will get one diploma. Every graduate student is entitled to sit the diploma in business law in Myanmar, which is very popular diploma course. More than 500 students passed the entrance exam, and now the university is having crowded classes in the morning with the diploma students.  It could be suggested that education on attorney’s ethics would be necessary to keep trustworthy IP attorney system.

2. 2nd Dialogue ( 2-5 December, 2013)

(1) Agenda

The colored words indicate the matters which the preparation, report, and guidance and so forth were made by “JPO Support Team”. The non-colored words indicate the ones jointly conducted by JPO Support Team and Consultant Team.

■ 2 December, 2013

Follow-up of First Dialogue Courtesy Call to MOST

Presentation by Myanmar Side -Updating Current Status of IP System in Myanmar （Lunch） Presentation by Myanmar Side and Japan Side - Discussions on IP System

Presentation by Mr. Ueda, JPO - Trademark Transactional Measures

Presentation by Myanmar Side Presentation by Mr. Shigetomi, JICA Counsul Team - Whole Picture of IP System in Japan, How to Promote/Educate IP System

- Discussions on IP Strategy

■ 3 December, 2013 Presentation by Mr. Kinoshita , JICA Consul Team - Why IP Enforcement Important?

（Coffee Break） Presentation by Myanmar Side - Current Status of IP Enforcement in Myanmar and Development Plan

（Lunch） Presentation by Mr. Miyashita, JICA Consul Team and Mr. Tsuzuki, JPO Support Team

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- Toward Establishing Effective IP Enforcement System

Presentation by Mr. Miyashita - IP Enforcement System in ASEAN Countries – Thailand, Vietnam, Indonesia and Malaysia

（Coffee Break） Discussion on “Way forward for Making Effective IP Enforcement System” Discussion on “Remaining IP Issues to be considered, including Patent Attorney Association, IP Assessment”

■ 4 December, 2013 Presentation by Mr. Furusho, JICA Consul Team - Introduction: Overview of IP System: Differences and Similarities of IP Laws

- Business Flow

（Coffee Break）

Presentation by Myanmar Side - Current Status of Business Flow Development

（Lunch）

Parallel Session- Session 1: Patent and Industrial Design, Session 2: Trademark, Session 3: Copyright

■ 5 December, 2013 Parallel Session- Session 1: Patent and Industrial Design, Session 2: Trademark, Session 3: Copyright

Wrap up meeting with the team Closing Remarks by MOST

(2) The Attendants

*The upper part from a separator line: the participants from “IP support Team” and IP-related Ministries in Myanmar; the lower one: the staff of IP Section/MOST. Both are put in random order. *Note that the list of participants below does not necessarily correspond to the actual state.

No. Name Position Department/Organization Department of Advanced Science and Technology, Ministry of 1 Mr. Kyaw Swa Soe Director General Science and Technology 2 Dr. Swe Swe Aung Deputy Director Attorney General Office

3 Su Su Hlaing Deputy Director Union Attorney General's Office

Copyright and Registration Division, Information and Public 4 U Kyaw Moe Thu Assistant Director Relation Department, Ministry of Information Department of Commerce and Consumer Affairs, Ministry of 5 Daw Yin Min Hla Staff Officer Commerce Legal Counsel of UMFCCI / Myanmar Trademark and Patent Law 6 U Thein Aung Advocate Firm 7Mya Hla Director Customs Department

8 Khin Maung Hyum Staff Officer Customs Department

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9 Dr. Sein Win General Secretary Myanmar Printers & Publishers Association

Joint Secretary 10 U Aye Lwin UMFCCI General 11 Thi Thi Oo Assistant Director Research Department, Union Supreme Court

12 Tin Mayng Nain Myanmar Engineer Association / CEO of KOL Group Co.,Ltd.

13 U Phyo Thu Aung Staff Officer General Administrative Depatment, Ministry of Home Affairs

14 Dr. Toe Myat Nu Deputy Director IP Section, Ministry of Science and Technology 15 Dr. Aye Thiri Wai Deputy Director ditto 16 Dr. Hnin N we Aye Assistant Director ditto 17 Dr. Aye Aye Maw Assistant Director ditto 18 Dr. Khin Sandar Win Assistant Director ditto 19 Dr. May Phyo Thwe Deputy Director ditto 20 U Kyaw Khine Lin Staff Officer ditto 21 Daw Thi Thi Htun Demonstrator ditto 22 Daw Wint Thin Zar Myo Demonstrator ditto 23 U Aya Mying Naing Demonstrator ditto 24 Daw Zin Zin Win Kyaw Staff Officer ditto 25 Dr. Win Mar Oo Deputy Director ditto 26 Daw Wai Le Yi Assistant Director ditto 27 Daw Yimon Hlaing Tutor ditto 28 U Htwe Win Demonstrator ditto 29 Daw Aya Su Htwe Demonstrator ditto 30 Daw Zin Mar Myint Clerk ditto 31 Daw Thin Thin Soe Assistant Director ditto 32 U Nay Aung Myo Staff Officer ditto 33 Daw Khin Sandar Tun Demonstrator ditto 34 Daw Ei Ei Khaing Staff Officer ditto 35 Daw Swe Sandi Oo Demonstrator ditto 36 Daw Su Mon Hlaing Tutor ditto 37 Daw Theingi Win Lwin Demonstrator ditto 38 U Lin Aung Swe Assistant Director ditto 39 Daw Ei Khwar Nyo Soe Staff Officer ditto 40 Daw Aya Su Htwe Demonstrator ditto

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(3) Summary of 2nd Dialogue

■ Follow-up of the first dialogue with Myanmar

(i) Discussion on the current draft of IP law and issues arouse in first dialogue [Explanation from Japan side]  Firstly, Japan side asked Myanmar side to explain the current status of drafting IP laws. Myanmar side explained that (i) draft of trademark law is now subject to WIPO’s review, (ii) patent, industrial design and copyright laws are in the final stage of drafting which are made by Ministry of Science and Technology (the “MOST”), and is planned to be submitted to the Union Attorney General’s Office (the “UAGO”). Japan side responded that it would receive the final drafts and then point out, to IP section in MOST, matters to be revised.

[Transition period of trademark system]  As to transition period of trademark application/registration under the new trademark system, Japan side explained practical matters to be considered by introducing Japan’s past experience to introduce service mark system into Japanese trademark law. Specifically, Japan side explained that new trademark law required original/former trademark user to apply and register a service mark. After such explanation, both sides discussed (i) lengthy of transition period, (ii) how to deal with duplicate registration during the term of transition period, (iii) prior user’s right and (iv) continuous use right.  Japan side articulated the following points to be considered in designing transition system. Firstly, those who try to apply and register a trademark under the new system and then expand their business are the most contributing to the Myanmar’s economy. Secondly, those who try to prevent introduction of new system do not contribute to the Myanmar’s economy very much. Thirdly, those who were not original/former trademark user and try to apply/register a trademark with the intent to counterfeit are the worst category to impede Myanmar’s economical growth. Japan side categorized these three types in designing transition system in introducing service mark system in the past. Thus, Japan side strongly recommends that Myanmar should adopt the transition system to require original/former trademark owners to apply/register their trademarks before IP office.

[Duplicate registration of trademark]  Myanmar side explained that transition period would be three years. Also, Myanmar now has the plan that IP office will register all trademark applications and, after that, deal with duplicate trademark registration through the opposition/nullity procedure.  Japan side pointed out that it is better to shorten the term (currently three years) as much as possible to encourage early application/registration.  Japan side explained that, in Japan, JPO examined any and all trademark applications to prevent duplicate registration before granting registration.  Japan side pointed out that, if Myanmar allows the duplicate registration, it should consider the system to allow trademark registrant to keep using such trademark which was used by another former/original

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trademark user as long as such trademark registrant has no bad faith and/or is restricted to enforce its trademark right against former/original trademark user.  Myanmar side explained that it now consider to protect former/original trademark user in case that duplicate application is made by more than one party. Myanmar side also pointed out that there were many SMEs and it would be necessary to protect business interests of SMEs in designing trademark system. Japan side instructed that Myanmar government should (i) encourage such SMEs to apply/register their trademark as early as possible, and (ii) give minimum legal protection such as continuous user right if such SMEs fail to apply/register trademark. Japan side also instructed that, in relation to famous/well-known trademark in foreign countries, even continuous user right should not be established considering the necessity to promote foreign company’s investment into Myanmar.

[Discussion on concerns from Myanmar side]  As to trademark matter, Japan side explained the distinction between “famous” trademark and “well-known” trademark. Japan side pointed out that it would be necessary for Myanmar to protect famous/well-know trademark registered in foreign countries in order to promote foreign company’s investments into Myanmar.  It should be noted that “mere” famous/well-known mark and “quite” famous/well-known mark are distinguished under the trademark law in Japan. In relation to “mere” famous/well-known mark, one should consider similarity of mark and goods/services in reviewing registrability. On the other hand, in relation to “quite” famous/well-known mark, one should consider only similarity of mark, not similarity of goods in reviewing registrability.  After establishment of trademark system, Japan side instructed that Myanmar IP office would introduce a database to register famous/well-known trademark registered in foreign countries in order to effectively examine trademark registrability.  Myanmar side pointed out that it does not have enough budget and human resource to introduce such database at early stage. Japan side replied that it might cooperate with provision of the relevant list of famous/well-known trademark, which Japan side holds, for Myanmar’s reference, although details of cooperation should be conferred.

[Current plan of the establishment of IP office in Myanmar]  The Director General (“DG”) of MOST explained that, as of now, MOST would be the focal ministry which is responsible for IP office. The main reason is that (i) relevant budget (e.g., labor cost of IP staffs) is now allocated to MOST for the establishment of IP office, and (ii) MOST is now responsible for drafting relevant IP laws under the support of WTO, WIPO, JPO and KIPO, etc.

[Comments on current draft of IP laws from Japan side]  The requirements on language and term under the Madrid Protocol should be adopted into the Trademark Law.  Japan side also introduced that Japanese trademark law has the system of prior user’s right, which sets forth as follows:

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[Japanese Trademark Law Article 32(1)] Where a trademark identical with, or similar to, the trademark for which the application is filed by another person has been used in Japan in connection with the designated goods or designated services of the trademark for which the application is filed, or in connection with goods or services similar thereto, without any intention to be engaged in unfair competition, from the time prior to the filing of such other person's application for the said trademark registration, and as a result, at the time of filing of the application for trademark registration (at the time of filing of the original application for trademark registration or the submission of a written amendment, if the application for trademark registration is deemed to have been filed at the time of submission of a written amendment under Article 9-4 of this Law or Article 17-3(1) of the Industrial Design Law as applied mutatis mutandis under Article 17-2(1) or 55-2(3) of this Law (including its mutatis mutandis application under Article 60-2(2))), such trademark has become well known among consumers as that indicating goods or services pertaining to the business of the person, the person shall have the right to use the trademark in connection with such goods or services as far as the said person continuously uses the trademark for the goods or services. The same shall apply to those by whom such business is succeeded.  Japan side pointed out that too many subject matters which do not allow patent eligibility are stipulated in the Patent Draft Law. In order to promote foreign company’s incentive and investment into Myanmar, it should be revised. Japan side suggested that one idea would be to insert an exemption clause such as “Article × and × are not applicable for the subject matters which are stipulated by regulations to be set forth separately.”

(ii) Current status of preparation of the establishment of IP office  Japan side asked how IP office would be organized and when IP office would be established and operated.  Myanmar side replied that, at this stage, IP office would be organized under MOST. Also, DG of MOST mentioned that he personally hoped that IP office would be established 6-9 months later.

■ Object of Support: Support on “IP System” and Education on “Practitioner”

The following discussion was made with Support Team in Myanmar side.

[Explanation of current plan to the establishment of IP system from Myanmar side]  Myanmar government will submit all IP laws (patent, trademark, industrial design and copyright laws) to the cabinet at the same time, although the cabinet will decide the date/timing of effectuation of each IP law.  Myanmar side explained its future plan to establish IP system in a way that it will expand legal protection on geographic indication after effectuation of IP laws (patent, trademark, industrial design and copyright laws). After that, Myanmar plans to draft plant variety protection law.  MOST has had several meetings with other ministries such as Ministry of Information and Ministry of Commerce in the course of drafting IP laws. MOST will work on IP awareness project to SMEs with

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other ministries.

[Establishment of IP committee]  Myanmar side explained that it established ASEAN Economic Committee within the Ministry of National Plan and Economic Development. The commissioner is vice minister of MOST, and the secretary is DG of MOST. The committee launched Working Committee on IP. MOST is now engaging IP and standardization project in such IP committee.

[IP Enforcement]  Myanmar side (MOST) explained that it would organize the enforcement system, which is comprised of IP court, customs, police and MOST. Customs and Police departments explained the current status of enforcement of IP against counterfeit. The Supreme Court mentioned that the possible organization of IP court.  Myanmar side explained that the principal ministry that is responsible for IP enforcement has not decided yet.

[Comment on trademark examination system from Japan side]  Japan side articulated its concern on trademark examination system in Myanmar. Specifically, Japan side pointed out the possible problems which arouse out of the Myanmar’s system not to make substantive examination in principle. The concern is that, without substantive examination, the public (e.g. many companies) always has to make burdensome search and legal clearance to avoid trademark infringement based on quite many publications of trademarks, which are not subject to substantive examination. Japan side instructed that Myanmar should adopt the system to make public all of trademark applications by which public may easily access to such system.

[Cooperation among industry-government-academia]  Myanmar side had an interest on the system of cooperation among industry-government-academia to assist SMEs in Japan. Japan side explained its strategic program to launch IP headquarters in many university as well as TLO (Technology Licensing Organizations) about ten years ago. These IP headquarters and TLO were assisted by government in the budget, and have worked with industries to transfer IP arising out of research in university to business for future commercialization.  Myanmar side had an interest on IP evaluation. Japan side explained that IP would be subject to a financing tool to make money to launch its business. In Japan, practitioners such as attorney at law, patent attorney and CPA jointly work on how to evaluate IP so that financing entity (e.g. bank) can effectively evaluate the value of IP in its financing procedure.

(iii) Discussion on overall IP system  Support Team in Myanmar pointed out the necessity to establish the central control board in Myanmar like the Strategic Counsel on Intellectual Property (“SCIP”) in Japan. Specifically, such central control board should play a coordinating role in establishing IP strategy on creation, protection and exploitation

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of IP.  Japan side pointed out the necessity to establish a trade secret protection system in Myanmar.

(iv) Discussion on practical issues arising out of adoption/launch of IP system  Although it is necessary to deal with the issue how to prevent significant delay of examination on quite many applications to be made after launching IP office, this issue is to be discussed.  Both side confirmed the existence of transition period issues on trademark. Details of discussion are described above.

(v) Confirmation on current status of IP enforcement in Myanmar and discussion on issues to be resolved/improved

(i) Current status of IP enforcement Myanmar side explained its current status of IP enforcement as follows.  In Myanmar, police and customs are mainly handling matters on IP enforcement.  Under the Customs Act, the import of counterfeit goods is prohibited. It is quite important to improve custom seizure practice. Specifically, Myanmar government should cope with (i) registration of application of custom seizure as well as IP rights in custom’s database and (ii) education on customs staffs (i.e. how to investigate and discern counterfeit).  Ministry of Home Affairs is now assisting local government staffs to cooperate with police on IP enforcement.  The Copyright Department under the Ministry of Information has initiated its operation to protect and register copyright since 24January, 2013.

(ii) Future plan to improve IP enforcement  Myanmar government should consider how to improve IP enforcement system in the future. In order to improve, various governmental organizations such as ministries, police and customs should cooperate with each other.  As to custom seizure, it is highly recommended that customs staff have a practical training to learn IP laws as well as how to discern counterfeit goods in relation to true and correct goods (i.e. parallel imports).  Japan side introduced how other ASEAN countries cope with IP enforcement. For example, Indonesia established IP task force to enforce IP as an organization controlled by President.

(vi) Instruction on practice/business flow after establishment of IP office in Myanmar

Japan side provided instructions (including detailed business flow), to IP section of MOST, which are necessary for effective practice after establishment of IP office.

(a) General Meeting – general instruction by Japan side

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 First of all, any and all business flows shall be in accordance with law. Since some of business flow previously provided by Myanmar side lacked consistency with law, Myanmar side would be required to check whether or not any and all business flows shall be in accordance with law.  In practice, it is necessary for IP office to set forth its examination guideline and operation manuals to deal with quite many applications. In this regard, JPO’s business flow is comprised of three types of documents: (i) Overview of Business Chart, (ii) Decision Table, and (iii) Business Description.  It should be noted that business flow is done by any section of IP office. Thus, it is necessary to make a map to clearly allocate each work to each responsible section.  In order to achieve/complete all of work described in business flow, it is necessary to (i) keep necessary budget, (ii) deal with necessary administrative matters, and (iii) educate IP office staffs.  Information technology (IT) equipment should be introduced to effectively deal with quite many applications. What is quite important is to introduce IT system on step-by-step basis. Firstly, it is quite important to put accurate date into database. After that, one should establish automation system based on such IP equipment.

(b) Parallel Meeting (patent/industrial design/trademark) [Explanation on questionnaire provided by Japan side]  Japan side explained the reason why it provided questionnaire. This questionnaire is used to determine what kind of works/matters should be identified in establishing business flow. This questionnaire is comprised of three parts: (i) works regarding receipt of documents from applicants (or their representatives), (ii) works regarding notice documents to be sent to applicants (or their representatives) and (iii) works regarding publication and gazette.  After Japan side’s explanation, Japan side instructed how to deal with such works by introducing Japanese practice.

(c) Parallel Meeting (Patent/Industrial Design) Japan side explained documentation required for patent application and business flow based on , according to “Outline of Patent Examination Practices in JPO”. Myanmar and Japan sides had the following dialogue on patent application and examination in Japan.  Japan side introduced the basic knowledge on patent claims and specifications as follows:  Since an invention is intangible information, it is required to express it with words in order for the public to recognize it. Patent claims define the scope of the patent right by verbal expressions of its technical scope. Therefore, claims are important in patent disputes, and thus the IP Office is required to carefully examine claims of patent application.  Patent system requires publication of an invention in return for granting exclusive right on it. Technologies are disseminated by the way that the invention is published, and the disseminated technologies lead further development of new technologies. Therefore, it is required in a patent application to describe an invention so that the general public can utilize it.  Myanmar side asked that whether electric data is eligible as evidence in litigation proceedings in Japan. Japan side explained that, in the case that the data is the original, it should be submitted as evidence.

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 Myanmar side introduced that it is impossible to submit electric data in litigation proceedings in Myanmar. Japan side proposed a solution of printing out the data as a document and obtaining IP Office’s authentication of identity between the data and the document.  Myanmar side inquired about the difference between a laid-open publication and a patent publication. Japan side explained as follows:  A laid-open publication is intended to notify that a patent application has been filed. It is issued after certain period after the application is filed. On the other hand, a patent publication announces that the patent has been registered. In principle, all patent applications and registrations are published.  Myanmar side introduced that inventions regarding national secret will not be published, but is not stipulated in the Draft. The current draft of Industrial Design Law has the provision on this point. Japan side pointed out that the current draft of the Patent Law does not mention this issue clearly, and suggested that the same provision in Industrial Design Law should be stipulated in Patent Law.  Regarding legislation which regulates leakage of secret information by staff in Patent Office, Japan side explained that National Civil Service Law and Patent Law provide prohibition on such divulgation.  Japan side suggested that the business flow should start with fee setup. They also explained that, in Japan, (i) whereas the application fee is low, examination request fee is high, and (ii) the fee depends on the number of the patent claims.  Japan side gave instructions on office action practices as follows:  An office action must precisely state the reason why the examiner determined the patent should not be granted.  The applicant may submit written argument against the office action, or he/she may amend the claims rejected.  Even if the applicant does not react to the office action, the Patent Office does examine the application; however, the application will be rejected as a consequence.  The process from “Notice of Rejection”, “Written Argument/Amendment” to “Subsequent Examination” is important to secure due diligence.  In Japan, an applicant can amend his/her patent claim any time before the patent at issue is registered. Also, he/she can amend the claim along with the submission of written opinion under Japan Patent Law Article 50.  Japan side suggested that IP Office should require an applicant to submit writings, such as written argument or written opinion, in case it give him/her opportunities of amendments or arguments against an office action.  Japan side pointed out Patent Law in Myanmar should have the provision to determine filing date, which should comply with international treaties. They gave examples of the Patent Cooperation Treaty and Trademark Law Treaty, which stipulate the conditions to decide filing date.  Japan side explained that the second applicant cannot obtain patent right even if the first applicant does not request examination for three years under first to file system; this is because the first application is published in eighteen months after it is filed, and thus the second application lacks novelty due to a laid-off publication of the first application.  Japan side explained that, in the past, it took about forty months at the latest from the filing to the first

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office action; however, the current situation is that the period is getting shorter year by year because the number of the examiners has been increasing. [cf. the average period from the filing to the first office action in 2012 is: (i) 20.1 months for patent, (ii) 6.3 months for industrial design, and (iii) 4.7 months for trademark.]  Japan side explained that a patent claim can be amended within the description, scope of claims or drawings originally attached to the application. They also suggested that this point should be clarified in regulation.  Japan side suggested that (i) a certificate of patent should not embody the right; (ii) a holder of a certificate and a genuine holder of a patent right should be separated to avoid the issues on loss or forgery of a certificate.  Regarding transfer of a patent right, Japan side explained that (i) transfer of a right is not recorded on a certificate and (ii) it is not required to deliver a certificate to transfer a right.

(d) Parallel Meeting (trademark) [Discussion on Business Flows]  First, Japan side introduced how to prepare business flows. They explained that:  Business flows show (i) the person who is responsible for a certain job, (ii) the timing to start the job, so that every responsible person can understand what he/she should do, even when he/she engages in a new task;  Business flows are also helpful to understand which task should be modified when laws and/or regulations are rectified since article numbers are indicated in the flows.  Regarding the business flows on fee payment for application, Japan side explained as follows:  JPO does not accept payments at the JPO counter. An applicant has three options for fee payment: (i) cash payment at a bank; (ii) stamps; or (iii) wire transfer through Internet banking. In case of the third options, JPO receives information of the payment.  In Myanmar, it is proposed that an applicant has to attach a receipt of his/her payment, which has to be made at somewhere designated. Therefore, the business flow will be quite simple.  The business flow should indicate tasks at a payment window and ones at an application reception counter. If the payment can be made at IP Office or a bank, the business flow should show these two options.  In the most of the other ASEAN countries, IP Office has windows for payment and ones for submission of application document. In some countries, IP Office has a bank window inside its office. JPO has established the system that applicants have their deposit accounts in JPO to keep money to automatically make required payments. Myanmar should consider which method would be appropriate and feasible.  Japan side introduced the fees for a trademark application. They also explained that the deadline structures can be provided in laws or regulations, and suggested that the period related to acquirement or loss of right should be indicated in laws.  Japan side explained that a business description states (i) details of a certain task in a business flow, and (ii) who should be responsible for it.

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 Japan side explained that a decision table indicates the items, such as the categories of documents which the IP Office accepts or divisions which receive the application documents.  Japan side explained that the description of “Emergency” in the sample business flow indicates the special business flow for emergent situation that, for example, huge earthquake has occurred in a certain country. They also suggested that special situations which are known in advance (e.g. mail delivery to isolated islands) should be considered in laws and/or regulations.  Japan side explained on the practice to handle application document as follows:  In Japan, applicant can file his/her application with two options, paper-basis or Internet application. In case of Internet application, the electric data of the application is saved in a JPO’s server; however, paper-basis applications have to be computerized.  An organization independent of JPO is in charge of document computerization. JPO designates an organization which is reliable in keeping the secrecy of the application. The organization converts the words in documents into electric data with OCR software.

[Discussion on Trademark System] Japan side introduced trademark system in Japan according to “Outline of the JP Trademark System”. The followings are the instructions from Japan side, which correspond to questions from Myanmar side.  Invalidation trial is different from appeal trial in the application procedure. In invalidation trial, a third party seeks for nullifying the trademark at issue arguing the errors made by an examiner.  In Japan, trademark applications based on Madrid Protocol are handled separately from domestic applications. Madrid Protocol applications go through two stages; one is receiving office; and the other is examining office. An applicant in Myanmar first has to apply for or register his/her trademark in IP Office, and then can file international application. International applications are sent to “International bureau” in WIPO.  A third party can file an opposition proceeding to cancel a trademark after it is granted. Related parties in an opposition proceeding are an examiner and a third party.  ID number can help searching the applicant. A barcode will be put on application documents in case of paper-basis application. When an applicant applies for an ID number, he/she can register his/her personal seal. Then, the ID number substitutes for his/her personal seal.

(e) Parallel Meeting (copyright) 【Organization of Agency for Cultural Affairs in Japan】  There is a staf of 30 people at copyright department under the Agency for cultural Affairs. Among 30 staff are allocated to, (1) 10 staff for policy and legal division (2) 8 staff for utilization and distribution promotion of works, registration division (3) 8 staff for International division (4) 4 staff for others

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The number of staff at copyright department, in comparison with that of Japan Patent Office (JPO), is quite small. JPO has a number of examiners but Agency for Cultural Affairs does not have examiners. Administrative works for copyrights can be easily handled by one or two department.

【Business Flow】  Main assignments are, (1) international copyright issues relating to WIPO, bilateral economic agreement (EPA) and so on, (2) exploitation and distribution of works (registration included), (3) copyright arbitration, (3) popularization and education of copyrights. All of those assignments are done by 30 staff. The most important assignment among them is law and regulation maintenance. Firstly, we obtain public opinions regarding a new (amendment) proposed law and then submit it to the Cabinet for approval. We have been in charge of law and regulation maintenance since 1914, law and regulation amendments have been quite frequently made.  In doing this, we have not only copyright division which is in charge of law and regulation maintenance, but “copyright council.” There is a sub committee under copyright council. We hold a meeting almost every month, having an opportunity to hear public opinions and comments. For example, we invite representatives of copyright owners, legal experts (lawyers), academia, and even users of works.  It is essential to survey both parties like copyright owners and users of works for law and regulation amendments. The important task of Copyright Department is how to facilitate the opportunity for both parties in order to equally obtain information and opinions from both. Copyright Department has to take consideration into not only legal protection for copyright owners but also promotion of copyright exploitation. Thus, we allocate ten (10) staff for this division.  (Myanmar side) You just explained about copyright sub-committee. Does this sub committee impose a criminal penalty for violation of copyrights? →(Japanese side) Let’s assume that we have a problem that internet users are more likely to use copyright infringed works than non-internet users. Under the current copyright law, there are no law or regulations (penalty and fine) on such behavior to regulate infringing behavior of Internet users. We have to examine whether a new law or regulation to deal with such behavior. In other words, do we need to provide legal protection from such infringing behavior, do we need to provide criminal sanction against such infringing behavior, or don’t we need any legal measures? Those are things to be discussed at copyright sub-committee. According to the discussions and a proposal made by sub-committee, we draft an amendment law or regulation and submit it to the Cabinet. After amendment is made, responsible ministry or agent (not Agency for Cultural Affairs) take necessary measures to control such behavior. In this regard, the major function of copyright council is to reflect public needs and amend the law or regulation if necessary.  (Myanmar side) I have a question about Japan Copyright Department. I understand that there are three (3) divisions under copyright department in Japan. Would you elaborate more on the policy and legal division? → The main function of policy and legal division is to call Copyright Council. This Council obtains not only public opinions but also conducts a survey or investigate necessary issues on, for example, foreign legal systems. Roughly speaking this division works on a draft law once a year. This is an important task for the

- 137 - division. Furthermore, laws are interrelated so that we have to scrutinize other related laws to make sure its legal consistency.  (Myanmar side) We added a clause related to Marrakesh Treaty as so advised by WIPO . →（Japanese side）As far as Marrakech Treaty is concerned, you will confront the problems of how to define” authorized entity” and which authority takes care of it.” This authority will be the one, which authorizes the translation of foreign publication into local language without getting permission from copyright owner. In this regard, you might face oppositions by right owners. Agency for Cultural Affairs discusses the issue with Ministry of Health, Labor and Welfare. Agency for Cultural Affairs makes all efforts to ease tension between right owners and users, as both parties are likely to be antagonistic to each other. Therefore, it is indispensable to iron out differences of opinion.  Registration system under Myanmar Copyright Draft law seems quite different from that in Japan, because of the fact that registration is not frequently used in Japan. Registration is not mandatory because copyright is granted upon creation. Registration is relevant to make sure that your works are transferred. Additionally, through registration one can get a proof of authorship and a date of creation, which can be a requirement for perfection requirement to duly assert against third parties in court. In reality, the number of registration is small.  (Myanmar side) As for copyright arbitration, do you have any request from other ministries? →(Japanese side) As for copyright arbitration, copyright owners directly asks Agency for Cultural Affairs for copyright arbitration. Thus, there are no requests made by other ministries. Basically speaking, Agency for Cultural Affairs is nothing to do with conflict resolution but court is. As long as I understand the copyright arbitration, Agency for Cultural Affairs intervenes only when its related organization such as collective management organization is one of the parties. In civil case, we issue a warning letter to alleged copyright infringer and many cases end up with out-of-court settlements. If this were not the case, then the case would go to court, where court judge may advise both parties to compromise.  (Myanmar side) We have similar process in Myanmar. Generally, people do not want to go to court to solve the problem. We may need to consider whether or not we should set up a special unit for conflict resolution outside the IP section or special division under the IP section. →(Japanese side) Many problems we have are handled by copyright committee which consists of experts and works on solution. Therefore, I do not think you need a special unit nor division where full-time workers are allocated. You can call for committee members upon necessity. According to your draft law that the establishment of IP Court is mentioned, IP section does not need to worry about it.

【Exploitation of Works】  Recent trend of high demand on copyright exploitation requires “Office of Distribution of Works” to take relevant measures to promote them. This Office also takes care of CMO（copyright management operator/organization）.CMO plays crucial role in copyright distribution. It is very difficult to collect use fees and distribute them to copyright owners without CMO. JASRAC (Japanese Society for Rights of Authors, Composers and Publishers), the world-largest CMO, collects 500 billion Japanese Yen (US$ 5 billion) as use fees annually. The mechanism of collecting use fees is pretty complicated and tedious so

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that copyright owners ask JASRC to collect use fees on behalf of them. Managing such CMOS is one of important assignments of our Office.

【Copyright Registration Regulations】  Myanmar Copyright Draft Law does not define the purpose of registration. Thus, it is highly recommended to add the definition of registration purpose. While patent ownership can be decided upon registration under patent law, copyright is granted upon creation according to Bern Convention (no-formality requirement). This is stipulated in Section 8 of draft law. In other words, legal protection is given to works without registration. Therefore, it is your duty to clarify what benefits are given to copyright registration. In Japan, the date of creation and the name of the author are assumed through registration, if there is no opposition. Additionally, copyright is transferrable; registration can prove the current owner of work.  Myanmar Copyright Draft Law stipulates business flow and powers of registrar. We think that those Chapters shall de repealed and be stipulated under the regulations, not under the law. You have to carry out a formality check for copyright registration. There is no need to disclose the result of examination to the public. Nor copyright system practices first-to-file system. The period of copyright examination for registration is just two (2) weeks (patent takes 18 months). The number of registration application is approximately 1,000 annually (343,000 patent applications). The number of copyright registrars is two (2) while we have 1,700 patent examiners.  We assume that there would be not so many copyright registration applications in Myanmar. However, foreign companies in ASEAN countries may exercise their intellectual property rights (such as trademark and patent) by using copyright registration system. (To be specific, company uses copyright registration to protect its patent, trademark or industrial design, because copyright registration needs only formality check, but substantive examination. It means that any kind of rights is used in order to take legal action against infringers. Additionally, based on the proof of authorship company issues a warning letter to infringers. This is quite useful when company wants to take legal action quickly, as copyright registration takes only a few weeks while patent needs much longer time. In considering such situation, it is advisable to make simple copyright registration system, which does not burden on IP section. Again, as for business flow, it is advisable to stipulate them under the regulation, not under the law. This gives you much flexibility to cope with practical issues, as you only need an approval from your Minister to amend it.

【Operational Structure】  (Myanmar side) Do you think the number of registration staff (2) is appropriate? →（Japanese side）As for copyright registration, we allocate two (2) persons to this assignment. They receive application forms, check them, and input data for registration into database.  (Myanmar side) Do they also input data into database? →(Japanese side) Yes. Assignments relating to general copyrighted works are our territory, while software programs are registered at SOFTIC (Software Information Center).  (Myanmar side) How do you stipulate registrar under Japan copyright law?

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→(Japanese side) We do not have the registrar system in Japan. Registration staff is assigned by Agency for Cultural Affairs.  (Myanmar side) As you explained about “statutory copyright license,” if no author is found in spite of searching, how do you handle this case in terms of registration? →(Japanese side) First of all, you have to make all efforts to find an author. For example, you put an advertisement in major newspapers, and search on the Internet. When in spite of those efforts you could not find an author, you are legally authorized to use the work, without obtaining permission from author, by paying an appropriate deposit to Agency for Cultural Affairs. When an author is found afterward, you have to pay the proper use fee to the author. In this case, you first pay the deposit and later pay the use fee.  (Myanmar side) Is there any regulation in term of advertisement period? →(Japanese side) Although there is no stipulation, the period of advertisement is approximately one month. You need to make efforts to let people know all over Japan.  (Myanmar side) Making such efforts does not constitute any legal problems even though author was not found. →(Japanese side) No. It does not constitute any legal problems because you made all efforts stipulated by law. I think that you should examine what statutory copyright license system is relevant in Myanmar, as statutory copyright license system restricts the author’s rights. You might confront oppositions from right owners. In this regards, it is indispensible to make efforts to hear opinions from both parties. However, copyright-related organizations in Myanmar are not well organized yet. If this were the current situation, you would first organize them before the introduction of statutory copyright license system.  (Myanmar side) Is statutory copyright license stipulated under the law? →(Japanese side) No, it is not. Basic understanding is that copyright owner has the sole right of permission. This is it.  (Myanmar side) How about statutory copyright license under the regulation? →（Japanese side） I think it is still too early. It would not be too late to examine it, when you confront the public needs in future. You can scrutinize (1) Japan-typed compulsory copyright license, and (2) Northern Europe-typed copyright licenses.

【Draft Copyright Law】 *couducted jointly by JPO Support Team and Consultant Team  (Japanese side) As the moral rights of CMO are stipulated in the draft law, it is unusual that CMO exercises the moral rights on behalf of author’s family.  (Myanmar side) This Section was stipulated in the previous draft following the advice of WIPO experts. We initially proposed that the responsible ministry shall exercise the moral rights instead of CMO, but it was changed. →(Japanese side) It is advisable that not only CMO but other organizations shall exercise the moral rights, too.  According to the Section 21of Japan Copyright Law (restriction on the rights of copyright owners), duplication of works for educational purpose is restricted. Exploitation of works using computer network is quite common among many educational institutions. Wire transmission on campus is also common. It is, therefore, advisable to examine whether or not such exploitation should be included in the Section 21.

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In Japan, copyrights relating to wire transmission on campus, are restricted by copyright law, if such transmission is made for educational purpose. There are display monitors in a classroom and educational materials in digital format are transmitted to each display monitor by on-campus facility. Additionally, some universities have several campuses, where students on different campuses take same lectures transmitted by wire or wireless. For such transmission copyrights restriction is applied.  What is the meaning of “dhamma dana”? The term in not clear for us. The term seems to be peculiar to Myanmar. Thus, it would be better to make its meaning clear to even foreign people. →(Myanmar side) “Dhamma dana,”which, is peculiar to Myanmar, means a sutra or something to do with Buddhism. It was stipulated, as we were asked that the State can use recorded voices of a Buddhist monk, and people can use a sutra and scripture of the Buddha freely without copyright restrictions.  (Japanese side) Copyright protection such as copyright management information and technological measures in digital environment is stipulated in the Draft. You have to clarify whether or not those behaviors constitute copyright infringement. How about constituting criminal sanctions against such behaviors? Criminal sanctions are not clearly stipulated in those sections. Those sections simply say “illegal” for those behaviors, which we think not enough and you need to elaborate more. Once your registration system starts, you will face many problems relating to law and regulation. However, it is not so easy to amend a law and takes a long time to do so. Therefore, I strongly advise you that you should stipulate them in the regulation, not in the law. Regulation has more flexibility than law in terms of amendment.  (Myanmar side) How do you regulate “appeal” in Japanese Law? →(Japanese side) In Japan, we have a general law to regulate appealing matters. Since we think that there would be no need of specific law on appeal for copyright registration, “Administrative Appeal Law” is applicable to copyright matter. If you do not have any general appeal law in Myanmar, an appeal system would be stipulated in each law. →(Japanese side) In your Draft Law there is an clause which stipulates customs issues. Customs is authorized to control import goods suspected of infringing copyrights at border. On the other hand, there is a clause which regulates exportation of infringed goods, in addition to importation. In this sense, the first clause may have to regulate not only import goods but also export goods.

3. 3rd Dialogue ( 27-30January, 2013 )

(1) Agenda

The colored words indicate the matters which the preparation, report, and guidance and so forth were made by “JPO Support Team”. The non-colored words indicate the ones jointly conducted by JPO Support Team and Consultant Team.

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Day 1 for IP Section (Jan.27)

Courtesy Call to Deputy Minister of MOST

【Follow-Up of Second Dialogue】 1 Reflection of Comments on IP Draft Laws made by Japanese Side＜IP section＞ 2 Current Preparatory Stage of Establishing IP Office＜IP section＞

（Coffee Break）

【Third Dialogue】 [Guidance on Business flow of IP Office] 1 Management of IP Office

《Parallel：Patent・Industrial Design・Trademark》 1 Making Business Flow

《Parallel：Copyrights》 1 Legal measures to protect copyrights on the Internet 2 Legal Framework for Copyright Protection

Day 2 for IP Section (Jan. 28)

[Guidance on Business flow of IP Office] 《Parallel Session：Patent・Industrial Design・Trademark》 1 Relevance of Business Flow and Regulations 2 Introduction of IT System

《Parallel Session：Copyrights》 1 Management and Procedure of Copyright Registration 2 Legal Framework for Copyright Protection

Day 3 for IP Section (Jan. 29)

[Suggestions on Acquisition of IP Rights and IP Management]

1 Vision

2 Suggestions on Laws and Regulations

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(1) Comments on the 11th Draft Laws (2) Comments on regulations

（Coffee Break）

3 Suggestions on business flow, organization, structure and IT Infrastructure (1) Outline (2) Business flow (3) Organization and Structure (4) IT Infrastructure

（Lunch）

4 Suggestions on IP human development/IP Awareness (1) Suggestions on establishment of IP related associations (2) Suggestions on IP Human Development (3) Suggestions on establishment of IP Court (4) Suggestions on IP Awareness

（Coffee Break）

《Parallel Sessions》 5 Suggestions on regulations

Day 4 for Enhanced IP Support Team (Jan. 30)

[Suggestions on Promoting the Implementation of IP System in Myanmar ] 1 Vision (1) Promotion of Foreign Direct Investment and Economic Growth (2) Industrial development by effective utilization of intellectual property rights (3) Coordination and Collaboration with concerned ministries to set up national IP strategy (4) Establishment of IP enforcement body and strengthening functions of responsible ministries (5) Increase of IP Awareness and IP Education System

2 Promoting functions of IP system

(1) Development of the system to utilize IP ・Suggestion on Coordination and collaboration among concerned ministries

(2) Enforcement

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・In achieving the vision aforementioned, enforcement is the inevitable. ・Current enforcement body ・Suggestions on effective and efficient enforcement system

(3) Setting up the Central Control Board ・In achieving above-mentioned (1) and (2), the establishment of CCB should be considered. ・Suggestions on the CCB ・Introduction of similar organs in ASEAN countries.

（Lunch）

(4) Setting up the Interface with Private Sector ・Establishment of IP agent or Patent Attorney System ・Setting-up of a Copyright Management Organization

3 Related IP issues (1) IP Basic Law and Strategy

（Coffee Break）

(2) Trade Secret

【Wrap-up】 Wrap-Up Session

(2) The Attendants

(i) 29 January, 2014

* In random order. *Note that the list of participants below does not necessarily correspond to the actual state.

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No. Name Title No. Name Title 1 Mr. Kyaw Swa Soe Director General 17 Daw Theingi Win Lwin Demonstrator 2 Dr. Seint Thandar Tun Deputy Director 18 Dr. Toe Myat Nu Deputy Director 3 Dr. Aye Thiri Wai Deputy Director 19 Dr. Phyu Hnin Khaing Deputy Director 4 Dr. Aye Aye Maw Assistant Director 20 Daw Zin Zin Win Kyaw Staff Officer 5 U Nay Aung Myo Staff Officer 21 Daw Ei Khwar Nyo Soe Staff Officer 6 Daw Ei Ei Khaing Staff Officer 22 U Aya Mying Naing Demonstrator 7 Daw Khin Sandar Tun Demonstrator 23 Dr. Win Mar Oo Deputy Director 8 Dr. Kyi Pyar Moe Assistant Director 24 Dr. May Phyo Thwe Deputy Director 9 Dr. Khin Sandar Win Assistant Director 25 Daw Wai Le Yi Assistant Director 10 U Kyaw Khine Lin Staff Officer 26 Daw Yimon Hlaing Tutor 11 Daw Swe Sandi Oo Demonstrator 27 Daw Wint Thin Zar Myo Demonstrator 12 Daw Su Mon Hlaing Tutor 28 U Htwe Win Demonstrator 13 Dr. Hnin N we Aye Assistant Director 29 Daw Aya Su Htwe Demonstrator 14 Dr. Pwint Phyo Win Deputy Director 30 Daw Thi Thi Htun Demonstrator 15 Daw Thin Thin Soe Assistant Director 31 Daw Zin Mar Myint Clerk 16 U Lin Aung Swe Assistant Director

(ii) 30 January, 2014

*The upper part from a separator line: the participants from “IP support Team” and IP-related Ministries in Myanmar; the lower one: the staff of IP Section/MOST. Both are put in random order. *Note that the list of participants below does not necessarily correspond to the actual state.

No. Name Position Department/Organization Department of Advanced Science and Tecnology, 1 Mr. Kyaw Zwa Soe Director General Ministry of Science and Technology

Law Department, Yangon Univesity, Ministry of 2 Dr. Khin Mar Yi Professor Education

3 Dr. Sue Sue Aung Deputy Director Attorney General Office

Copyright and Registration Division, Ministry of 4U Aung Kyaw Oo Director Information

5 Khin Mya Mya Htway Assistant Director Ministry of Commerce

6 U Ko Ko Lwin Assistant Director Ministry of Home Affairs

7 Tin Tin Aye Staff Officer Customs Department, Ministry of Finance

8 Kay Thi Khaing Nyein Staff Officer Reserch Department, Supreme Court

Law Firm, Myanmar Trademark and Patent Law 9 Thein Aung Senior Associate Firm

Copyright and Registration Division, Ministry of 10 Kyaw Moe Thu Assistant Director Information

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11 Daw Tharaphis 2nd Assistant Director Ministry of Information

12 Daw Su Thet Hnin Staff Officer Ministry of Information

13 Dr. Seint Thandar Tun Deputy Director IP Section, Ministry of Science and Technology 14 Dr. Aye Aye Maw Assistant Director ditto 15 U Nay Aung Myo Staff Officer ditto 16 Dr. Kyi Pyar Moe Assistant Director ditto 17 Dr. Khin Sandar Win Assistant Director ditto 18 U Kyaw Khine Lin Staff Officer ditto 19 Dr. Hnin N we Aye Assistant Director ditto 20 Daw Thin Thin Soe Assistant Director ditto 21 Dr. Toe Myat Nu Deputy Director ditto 22 Dr. Phyu Hnin Khaing Deputy Director ditto 23 Daw Zin Zin Win Kyaw Staff Officer ditto 24 Dr. Win Mar Oo Deputy Director ditto 25 Dr. May Phyo Thwe Deputy Director ditto 26 Daw Wai Le Yi Assistant Director ditto 27 U Htwe Win Demonstrator ditto

(3) Summary of the 3rd Dialogue

The followings are the report of the dialogue held on January 29 and 30 participated by a consultant team. In these two days the Japanese side made presentation in the form of “recommendation” regarding challenges for developing IP laws, establishing IP office, and building & managing the IP system in Myanmar by summarizing and analyzing the current situation of Myanmar clarified through the three dialogues.

(i) 29 January, 2014

(a) Proposal for the laws and regulations (JPO Support Team) Proposals were given with respect to the four laws under legislation. For instance, detailed proposals on voluntary amendment to reasons for rejection and a proper procedure for complaint against invalidation were offered, together with procedure of receiving date, method of calculating term, filing fee, etc. After that, proposals were made on international application and divisional application for patent, on filing procedure of partial design and laying open of application for industrial design, and on how to certify well-known mark and collective mark/certification mark for trademark.

(b) Recommendation for business flow, organizational structure, and IT infrastructure (JPO Support Team) JPO Support Team underlined the importance of bearing in mind transparency, stability, and convenience of work of IP office and IT system used for the work. They explained, the “transparency” means that the work is transparent and accountable to the officials of IP office and users including applicants, the “stability” indicates that the work of IP office such as acceptance of documents, dispatch of documents, registration of rights, and publication is stably implemented throughout the year, and the “convenience” refers to friendliness to IP office

- 146 - and users including applicants. In addition, while provision of more speedy and accurate information by utilizing internet will enhance the transparency, the percentage of trademark application is anticipated to be high, and therefore it is required to examine how to cope with the transition period from the current registration system. They also pointed that concentration of applications at Yangon Office would be expected, and not only the increase of total applications but also the rise of percentage of patent application were anticipated in line with economic growth and economic situation.

(c) Recommendation for IP strategy (JPO Support Team) Firstly, proposals were made on effectiveness of OJT by those who experienced with substantive examination and development of examination guideline. JPO conveyed that they were ready to dispatch examiners to Myanmar. Secondly, the recommendation on the significance of establishing IP court taking an example of IP High Court of Japan. Thirdly, they emphasized the importance of establishing private IP associations such as Patent Attorney Association. Finally, the importance of improving the skill of IP human resources through the expert dispatch from JPO was underscored.

(d) Q&A Myanmar side checked a system of IP High Court and human resource development. There was a comment that the proposals by the Japanese side were significant for developing IP legal system in Myanmar for the future.

(ii) 30 January, 2014

In accordance with the agenda, proposals were given as to the items described in “Chapter VI 6.2 Recommendation” (Proposals 16-26) of this report, from a viewpoint of promoting a function of IP system as a whole. The followings are the contents of Q&A with Myanmar during recommendation.

Myanmar side expressed its intention to make efforts for opening IP diploma course at Yangon University.

Myanmar side confirmed the meaning of a vocabulary used in the recommendation, while Japanese side explained the importance of making the process of finding infringement transparent. Also, Myanmar side asked a question about how customs officials determine infringement or non-infringement, genuine or counterfeit in Japan as they are difficult to be made by their customs officials. Japanese side explained, Japanese customs have ex-officio control and control based on suspension motion by right holder, and the latter especially receives information from a right holder on where infringing goods will enter or how to differentiate counterfeits. In addition, IPR expert advisor system at the customs was introduced. Myanmar side voiced the desire for education and support for identification of genuine or counterfeit.

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Myanmar side asked a question regarding the percentage of civil and criminal cases in IPR infringement cases of Japan. Japanese side answered, most of the infringement cases of patent and industrial design are civil while copyright and trademark are mostly criminal cases. Also, Myanmar side asked about calculation of damages in civil case, and Japanese side pointed out difficulty of calculating damages and explained accordingly the presumption of damage amount was provided under the Japanese laws. It added the explanation that Japan did not have a punitive damage system like the United States.

Myanmar side asked about Japanese experience on “one-stop-shop” of enforcement, to which Japanese side explained “Office of Intellectual Property Protection”. The office was created based on the need for a single government office capable of comprehensively assisting businesses victimized by counterfeit and pirated goods. It ensures that inquiries are coordinated with all related ministries prior to providing how to properly address the issues.

Myanmar side raised a question if there was a special qualification for judges handling IP cases in Japan. As an answer to it, Japanese side explained the judges were basically same as those of other courts having a background of law, but the judges handling IP cases had many experiences, and Judicial Research Official and Technical Advisor might be involved in order to support technical aspects. In addition, the Patent Attorney Examination System was explained to the question from Myanmar side about how to become a Patent Attorney in Japan.

While Myanmar side asked if CMO obtained profit, Japanese side explained the function of CMO. It may use certain percentage of collected money as the expenses for managing organization and disseminating and raising awareness, and the rest is all distributed to right holders. In that sense, CMO is not a corporation for profit making but a non-profit organization as a global trend.

Myanmar side asked what role METI was playing in the field of IP in Japan. To answer the question, Japanese side explained about the jurisdiction of Unfair Competition Prevention Act (protection of trade secret) and the role of promoting exploitation of patent by small and medium sized enterprises and facilitating development of new products utilizing patent through collaboration of university and business from a viewpoint of how IP could be connected with business for contributing to the development of Japanese economy. Additionally, Myanmar side asked if it would be good for Ministry of Commerce to have a jurisdiction over protection of trade secret in Myanmar since the Ministry of Commerce was comparable to METI of Japan.

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And Japanese side answered, though METI has the jurisdiction in Japan, which ministry should be responsible for trade secret should be examined by each country.

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Appendix 2 Reports of the Seminars

APPENDIX 2 Reports of the Seminars

1. Seminar on 3 February, 2014 (Nay Pyi Taw) [basic Intellectual Property]

In cooperation with MOST, an intellectual property (hereinafter referred to as “IP”) awareness workshop was held in Nay Pyi Taw for personnel from government agencies and others, providing basic information on IP issues and the current status of the legislation of the four laws (patent, industrial design, trademark and copyright) in Myanmar.

1.1 Outline

①Title：JICA/MOST Joint Seminar on IP Awareness (Basic Knowledge about Intellectual Property) ②Date and time:：13:00 to 17:30, Monday, 3 Feb., 2014 ③Venue: Thingaha Hotel, Function Hall, Nay Pyi Taw ④Participants About 60 participants (MOST, Union Attorney General’s Office, Ministry of Home Affairs, Ministry of Finance, Ministry of Information, Ministry of Commerce, Ministry of Industry, Ministry of Agriculture and Irrigation, Ministry of Communication and Information Technology, Ministry of Planning and National Development, Ministry of Sports, Ministry of Culture) ⑤Presenters （Myanmar side）  Dr. Hnin New Aye, Assistant Director, MOST （Japanese side）  Mr. Takahiko Kinoshita, Secretary General/Research Fellow-in-Chief, Kyoto Comparative Law Center  Mr. Takamitsu Shigetomi, Attorney at Law, Oh-Ebashi LPC & Partners  Mr. Toshiya Furusho, Attorney at Law, Oh-Ebashi LPC & Partners  Mr. Yoshiyuki Miyashita, Attorney at Law, Nishimura & Asahi

1.2 Presentation outlines

①Intellectual Property Laws, Foreign Direct Investment and Technology Transfer (Kinoshita) The speaker explained how IP is related to economic development, promoting foreign investment, and technology transfer, and why it is so important. He used a number of objective

- 153 - indices to discuss the current international status of Myanmar, and the general trend, stressing the importance of IP law as a driving force. He also explained that merely enacting related laws is insufficient; it is crucial to provide thorough enforcement through the cooperation of the police, courts, and customs agencies, as well all the organizations participating in the seminar, including the ministries of Commerce, Industry, and Information.

②International Framework (Shigetomi) The speaker explained the principles of territoriality and IP law independence, which are fundamental to the international IP framework, then introduced major international IP treaties. He then outlined international treaties that Myanmar is signatory to, especially TRIPS Agreement. As a signatory, Myanmar is obligated to observe the stipulations of the treaty, and the speaker explained the necessity for MOST and other agencies to understand the rules fully, establish an effective division of labor, and cooperate with other organizations in establishing a unified system.

③Basic Knowledge about Intellectual Property Laws (Furusho) The speaker introduced the overall IP legal system and the ministries and agencies responsible for IP law in Japan, and then introduced the criteria for the creation of patent rights, industrial design rights, trademark rights, and copyrights, as well as their legal implications, illustrated with concrete examples of each. He then explained the advantages and disadvantages of different protection term lengths and the purpose of the registration system, closing with comments on the possibility of IP protection through laws preventing unfair competition, the necessity for the protection of business secrets, and legal remedies (including punishment) for infringement.

④Basic Knowledge about Copyright and Related Rights (Miyashita) The speaker provided a basic explanation of copyright and related rights, discussing what is protected by the Copyright Law, details of the rights provided, who holds the rights, and other points, illustrated with examples of infringement (Japanese precedent). He emphasized the need for a balance between rights protection and fair use when a copyright system is formulated, citing the adverse effect of overprotection on later creative activity.

⑤Introduction of Intellectual Property (IP) Laws and IP Office (Dr. Hnin New Aye) ※Presentation in Burmese The speaker outlined the ongoing formulation of the four IP laws by the government of Myanmar (MOST), outlined the principle objects protected under each law and the criteria required for rights to be created. She then explained the role and functions of the proposed IPOM, scheduled for establishment.

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1.3 Q&A Session1

【Copyright】 Q (Union Attorney General’s Office): What legal remedies are available when moral rights are infringed? A (Japan): In principle this is handled under civil law, although it could be a criminal case if the infringement were deliberate. In other words, protection is basically the same as infringement of copyright (rights of ownership).

Q (Union Attorney General’ Office): What is the term of protection for moral rights? A (Japan): They are held by the copyright holder, and in principle cease with the death of the copyright holder. However, it is for relatives of a deceased copyright holder to claim infringement of moral rights on the assumption that had he or she still been alive the usage would not have been approved.

Q (Union Attorney General’ Office): What can be done when a person with mental disability copies a copyrighted work? A (Japan): In the event of copyright infringement it is possible to request a cease-and-desist, and demand compensation. A cease-and-desist can be obtained for an objective infringement regardless of whether the infringement occurred deliberately or accidentally. In this case, the injured party would probably request the person responsible for managing the mentally disabled person to stop the infringement. A demand for compensation would require clarification as to whether the infringement was deliberate or accidental, making it impossible to demand compensation from a person who has no control over his or her own actions. If the person responsible for managing the mentally disabled person can be shown to have failed in such management, however, that manager could be sued for compensation.

Q (Union Attorney General’s Office): Are broadcaster rights covered under Copyright Law, or is there a different law? A (Japan): They are covered under Copyright Law.

Q (Ministry of Commerce): Copyright is automatic, regardless of whether the work is registered or not, but it is awkward to have works with no filing date and no way to verify when they were created or when copyright came into effect. Should regulations be drafted for this problem? A (MOST): The copyright holder should provide evidence that he or she is the creator, and register the work. A (Japan): Copyright comes into effect the moment a work is created in a fixed, tangible form of expression, so the fact of creation must be established by manuscripts or other materials

1 It should be note that the contents described hereinafter have not been confirmed by the speakers/questioners.

- 155 - submitted by the rights holder. The establishment of this creation can be facilitated by recording the dates of creation and first publication.

【Trademark】 Q (Ministry of Commerce): I have a question about non-profit organization (NPO) registration. Is the mark of an NPO covered under association trademarks or copyright? Are the marks of associations that we currently manage going to be covered by the new IPOM when it is established? My understanding is that IP is for-profit, but will an NPO also have to register its marks with IPOM? A (MOST): The Ministry of Commerce will continue to manage NPO registration. If the mark is to be used for an economic purpose, however, a registration application should be made to IPOM, and if there are no problems such as an existing similar trademark or some other reason to refuse registration, it should be registered. An association may also apply to register its trademark. The registration of the association by the Ministry of Commerce and the registration of the trademark by IPOM are separate.

Q (Ministry of Commerce): So we are to understand that the NPO marks registered with us now have nothing to do with IPOM? A (MOST): In principle they are unrelated. However, when a mark is created, it is possible that the proposed mark could infringe an existing copyright, and if the association wishes it to be protected as a trademark then an application should be made and the mark should be registered as a trademark.

Q (Ministry of Sports): The International Olympic Committee (IOC) has a variety of marks, including the interlocked five rings. If we want to use those marks at sporting events, would it be possible for the Ministry of Sports to apply for trademark registration as the representative of the IOC? A (MOST): I think it would be possible “as a representative”, but cannot say for sure.

【Patents】 Q (Ministry of Commerce): Universities are non-profit organizations, but can university laboratories own patents? And can they register patents overseas? A (MOST): Whether a university or a laboratory, an invention can own a patent. Under the Patent Cooperation Treaty (PCT), a patent application filed from any signatory nation has the same effect as simultaneously filing patent applications with all signatory nations. In other words, if the university files the patent in Myanmar, it is not required to file it with the patent agencies of other nations. I hope that the IP law can be finalized here, and that Myanmar can sign the treaty soon.

【Other: Geographical Indications】

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Q (Ministry of Commerce): Who has the authority to authorize geographical indications (GI)? A (MOST): For special products, the people of the producing region should form an association and authorize it themselves. No law has been proposed to cover GI yet, and in fact the actual GI system will probably not get started until the appropriate laws and regulations are in place. A representative of the region will probably apply for GI registration.

【Other: Protection of Genetic Resources, Genomes, Plants】 Q (Ministry of Agriculture and Irrigation): Is there anything like the Nagoya Protocol for the Convention on Biological Diversity? How are ownership determination methods and rights determined? A (Japan): The Nagoya Protocol deals with how genetic resource are accessed and benefits shared when they occur, but does not deal directly with IP rights such as patents or copyright. It has been proposed to protect genetic resources under copyright law, however, so further discussion is needed to determine if Myanmar as a nation should protect them as IP rights, or adopt a different scheme.

Q (Ministry of Agriculture and Irrigation): The proposed patent law does not cover plants or animals, unlike the US. We have heard that Mexican beans were registered as a US patent, and the patent was finally invalidated in court. There are many new plant genomes in Myanmar, and there are cases where they are transported to other nations and registered there without our authorization. Products and processes have also been patented. We want to be able to register them in Myanmar as well. The Ministry of Agriculture and Irrigation is now preparing a draft covering plant breeder’s rights. There will be linguistic issues when translating in into Burmese or English, and confusion because the terms used in the IP laws are sometimes the same as the draft (IP, exclusive right, etc.) but meaning is different. It sometimes causes confusion. A (MOST): Plants and animals will not be covered by patent law for the time being. One reason is that there is insufficient skill for patent examination. As examination skill and experience become available we hope to revise the law and also accept patent applications for plants and animals.

Q (Ministry of Agriculture and Irrigation): Will regulations covering genetic resources and new plant varieties be included in the IP law, or should they be handled under our law? A (Japan): The problem requires further investigation. The Nagoya Protocol was designed to provide rules for accessing biological diversity (genetic resources, etc.) and sharing benefits. It does not contain regulations related to IP, but only provides for authorization systems to access genetic resources in developing nations, and for reasonable benefit-sharing with developing nations where the profit-making genetic resources were obtained. However, no multi-national agreement has been reached yet. The issue of access to genetic resources is entirely separate from protection of animals and

- 157 - plants. In addition, protection faces problems different from patents. New varieties of plant are covered by the International Union for the Protection of New Varieties of Plants (UPOV) international treaty of 1991. In many nations, new plant varieties are handled by the ministry of agriculture. Technology to discriminate varieties, such as genetic analysis, is very specialized, and facilities are needed to store genome specimens. It is difficult to demand all of this from the Patent Agency or IPOM. It is also extremely difficult to prove infringement of a new variety. Discussion is needed in Myanmar to decide if new varieties should be handled by IPOM or the Ministry of Agriculture and Irrigation. Many nations have implemented Sui Generis to make Access and Benefit Sharing (ABS) possible, and because of the relation with the Convention on Biological Diversity (CDB) it is common for it to be managed by the environment ministry. IPOM, Ministry of Agriculture and Irrigation, and Ministry of the Forestry must discuss the design of Myanmar national policy jointly.

2. Seminar on 4 February, 2014 (Nay Pyi Taw) [Enforcement]

In cooperation with MOST, an intellectual property (IP) awareness workshop was held in Nay Pyi Taw for personnel from government agencies and others, focusing on enforcement issues.

2.1 Outline

①Title： JICA/MOST Joint Seminar on IP Awareness (Enforcement) ②Date and time: 13:00 to 17:00, Tuesday, 4 Feb., 2014 ③Venue: The Thingaha Hotel, Function Hall, Nay Pyi Taw ④Participants About 70 participants (MOST, Union Attorney General’s Office, Ministry of Home Affairs, Ministry of Finance, Ministry of Information, Ministry of Commerce, Ministry of Industry, Ministry of Communication and Information Technology, Ministry of Planning and National Development, Ministry of Culture, Supreme Court, attorneys at law, UMFCCI, media, etc.) ⑤Presenters (Myanmar)  Dr. Kyi Pyar Moe, Assistant Director, MOST (Japan)  Mr. Takamitsu Shigetomi, Attorney at Law, Oh-Ebashi LPC & Partners  Mr. Toshiya Furusho, Attorney at Law, Oh-Ebashi LPC & Partners  Mr. Yoshiyuki Miyashita, Attorney at Law, Nishimura & Asahi

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2.2 Presentation outlines

① Why Enforcement is Important (Furusho） The speaker presented examples of the numerous IP right infringements in the Myanmar market, and explained what damage they cause to society. He stressed the importance of effective enforcement implemented cooperatively by involved ministries and agencies, and explained why enforcement is important in attracting corporate investment, technology transfer and absorption, technical development of local business, and cultural progress.

②IP Infringement Cases (Shigetomi） The speaker introduced concrete examples of IP right infringement cases, outlining the procedures in both civil and criminal proceedings initiated to remedy the infringement, along with explanations of considerations and points of controversy at each stage of the procedure. He also touched on the problems of parallel imports, and identifying infringing parties in the event of Internet-based infringement (indirect infringement), as well as the importance of customs enforcement and considerations in cease-and-desist orders in customs.

③How to Prevent IP Infringement/IP Enforcement in Myanmar (Dr. Kyi Pyar Moe, Assistant Director, MOST) *Presentation in Burmese The speaker explained the current enforcement body in Myanmar, which included Customs control, police control, judicial system, prospective involvement of IPOM in policy. Furthermore, sanctions of specific laws such as Sea Customs Act and Penal Code were introduced.

④IP Infringement and Enforcement Bodies in ASEAN Countries (Miyashita） The speaker discussed the advantages and disadvantages of the enforcement systems (government agencies) of Malaysia, Thailand, Indonesia, and Vietnam, outlined the major roles of organizations responsible for enforcement (organization, personnel, performance, etc.), systems and performance of civil, criminal and government remedies, and multi-agency frameworks for IP strategy. He stressed that it is crucial for procedures to be defined for effective enforcement, and for IP to be considered from multiple aspects, making it essential that an organization be selected at the national level to lead the effort and take effective action in cooperation with other involved ministries and agencies.

2.3 Q&A Session

【Enforcement】 Q (Union Attorney General’s Office): You outlined the enforcement stances and efforts of four ASEAN nations, but which one is the best practice?

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A (Japan): It is Malaysia. There are many infringement cases, which indicate that judicial is functioning effectively. The MDTCC is also implementing administrative action rapidly. Malaysia was removed from the USTR Special 301 Report list of monitored nations in 2012, indicating that their efforts are having an effect.

Q: (Customs): Is it legal for the rights holder to enter a place where an infringement is suspected for search and seizure? And in this event, can the suspected infringer act to prevent such seizure? A (Japan): There is no legal authority, and even the rights holder cannot legally enter or take someone else’s property. Civil law does not accept self-help, because to do so means that people claiming infringement would enter other people’s property frequently, creating chaos. If a party enters another’s property with legal authority, however, the suspected infringer cannot act to prevent it.

【Trademark registration】 Q (audience): It is forbidden to use stars or elephants in marks in Myanmar, but what happens if a trademark application is made for such a mark? A (MOST): Stars and elephants cannot be registered under Myanmar law. The Trademark Law not only forbids registration of items forbidden in Myanmar, but also flags, crests and other such symbols of foreign nations.

【Technology Transfer】 Q (audience): When a foreign corporation wishes to transfer technology to a Myanmar company, is it sufficient to sign a confidentiality agreement? A (Japan): In Japan, usually a confidentiality agreement is signed, defining what information will be provided, and forbidding the receiving party from disclosing confidential information to a third party, or from using for purposes other than those specified in the agreement. This contract only binds the signatories, however, so in the event the information leaks to a third party through one of the signatories, the agreement provides for no response. For this reason, such situations in Japan are protected as business secrets under the Unfair Competition Prevention Act.

Q (Ministry of Planning and National Development, ASEAN IP working committee): I participated in a technology transfer meeting in Europe last week. What is MOST’s position on technology transfer? What division would be responsible for managing it? A (MOST): We think that technology transfer should be handled under a separate law from the IP Law. At present, technology transfer is handled by departments and bureaus under MOST, and I cannot say which one would handle management. Discussion with other ministries and agencies is needed.

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Q (audience): Will the law on technology transfer be enacted before or after the trademark law? A (MOST): We cannot answer to that question at present. No one knows. A (Japan): There is no direct relationship between laws relating to technology transfer and the IP Law. Technology transfer is connected more to investment law. For example, it is common to provide various incentives (such as taxes) for technologies transferred from overseas, and this is why many nations have systems for registering technology transfer. Depending on the objective, technology transfer could be handled by various ministries. Usually, the ministry handling investment would be appropriate for the reasons I just cited. On the other hand, IP Law would cover protection of the technology transferred into Myanmar.

【Others】 There was dissatisfaction expressed by participants from Myanmar about the slow progress of law formulation. MOST replied “We are working on it. We hold many meetings with other groups involved, obtained comments from the Attorney General’s Office, WIPO, Japan and other nations, and have been revised the draft laws. We have submitted the revised proposal to WIPO and wait for their comments. We are continuing our work toward enactment.” Other participants from Myanmar pointed out that it is not clear whether the Merchandise Mark Act or the Penal Code would be applied in case of IP infringement.

3 . Workshop on 7 December, 2013 (Yangon)

In order to educate intellectual property, JICA and UMFCCI jointly hosted an open workshop for private companies, lawyers and general public in Yangon. IP Section of MOST reported current status of establishment of IP laws and IP Office in the beginning of the presentations from Myanmar side.

3.1 Outline

①Title：JICA/UMFCCI Joint Workshop：Impact and Power of Intellectual Property “How does it benefit business” ②Date and time:：13:20 to 18:50, Saturday, 7 Dec., 2013 ③Venue: Convention Hall of UMFCCI, Yangon ④Participants About 230 participants (private companies, lawyers, industry groups, media etc.) ⑤Program [Opening] Welcome Speech by U Aye Lwin, Joint Secretary General of UMFCCI Special Remarks by Mr. Naoto Mukai, JICA

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[Part 1] Introduction to New IP Laws and IP Office in Myanmar (a) Dr. Hnin New Aye, IP Section/MOST “What are Intellectual Property Laws” (b) Mr. Toshiya Furusho, Oh-Ebashi LPC & Partners “Power of IP: IP as an engine of economic growth” (c) Mr. Takahiko Kinoshita, Kyoto Comparative Law Center Questions and Answers Session Coffee Break [Part 2] “IP Awareness -Momentum for Economy” (d) Mr. U Than Maung “Challenges for New IPR Regime” (e) Mr. U Thein Aung Panel Discussion and Questions and Answers Session [Closing] Closing Remark by U Aye Lwin, Joint Secretary General of UMFCCI

3.2 Presentation outlines

①Introduction to New IP Laws and IP Office in Myanmar（Dr. Hnin New Aye）*presentation in Burmese Dr. Hnin New Aye explained the progress of formulating four laws of intellectual property so far addressed by the government of Myanmar (Ministry of Science and Technology) and the key points of the draft such as the objects of protection by respective laws and the requirements of establishing rights as well as the role and functions of IP Office which will be newly established.

②What are Intellectual Property Laws （Furusho） After introducing the comprehensive structure of IP legal system and the competent authorities of IP laws in Japan, Mr. Toshiya Furusho explained the requirements of establishing rights of patent, industrial design, trademark and copyright, their legal effects, and specific examples of each right, etc. He described merits and demerits of a short or long term of protection and the purpose of registration system. Finally, he touched upon the importance of IP protection by Unfair Competition Prevention Law and the legal remedies (criminal punishment) against IP infringements.

③Power of IP: IP as an engine of economic growth （Kinoshita）

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Introducing the actual situation of IP infringement in the market of Myanmar, Mr. Takahiko Kinoshita pointed out the cause as the lack of IP system. He also explained that the absence of IP system would hinder the technological and economic development by comparing with ASEAN nations. He underlined IP system serving as an engine for foreign investment promotion led economic development, domestic industry promotion, and international competitiveness enhancement.

④IP Awareness -Momentum for Economy （U Than Maung）*presentation in Burmese First U Than Maung introduced the international framework of IP legal system and how the current IP system in Myanmar diverged from the international standard of IP protection. Regarding Myanmar’s accession to international agreements in the field of intellectual property, in comparison with the states of 10 member countries of ASEAN (Myanmar has not acceded to international agreements except for WTO and WIPO.), the importance of trademark specially in business and the necessity of IP for small and medium sized enterprises were explained.

⑤ Challenges for New IPR Regime (U Thein Aung) *presentation in Burmese After pointing out that the three times extension of the deadline for complying with TRIPS Agreement is negative for Myanmar from a viewpoint of attraction of investment from overseas and business, U Thein Aung summarized the challenges of Myanmar in the aspect of IP system, legislation, establishment of IP Office, and human resource development. He also referred to the necessity of enacting not only IP four laws but also Unfair Competition Prevention Act, Trade Secret Protection Act, and Consumer Protection Act and developing a dispute resolution system. Finally he emphasized the importance of changing the mindset, transparency of law, IP enlightenment, human resource development, etc.

3.3 Q&A Session

【Difference between Myanmar and other countries】 Q: What are differences of IPR between Myanmar and other ASEAN nations? A: One characteristic point is that there is no IP Law (except for Copyright Act 1914) in Myanmar, and some special acts were enacted in order to enforce IPR without having an IP specific Law. It means that the legal system is in a state of patchwork. On the other hand, other ASEAN nations have developed the legislation as they rapidly prepared it in accordance with TRIPS Agreement. Myanmar should not address the situation by enacting patchwork type of specific acts but enact new IP laws. This is a big difference.

Q: Are there any differences from our IP laws in comparison with Western and other countries IP laws? If so, let me know the differences.

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A: Basically each nation may establish its own IP legal system in accordance with the principle of territoriality. But as a minimum standard there are international agreements such as TRIPS Agreement and others. Some countries provide more protection than TRIPS Agreement requirements. In many countries of Asia, the term of protection of copyright is up to 50 years after the death of the author, while in Latin America many countries provide 70 years and more. As for the scope of trademark protection, some countries cover color, sound, olfactory/smell, etc. Concerning industrial design, not only whole design but partial design can be registered in Japan, but many countries of Asia protect only whole design.

Q: Myanmar has many old laws including Copyright Act of 1914, but why did we fail to function well? A: Various factors are required to make laws take root in society. If it is compared to a pyramid, the law is the bottom foundation, and administrative measures like implementing regulations and procedures are the second layer. Myanmar lacked them. And the top of the pyramid is “enforcement”. The lack of activities concerning enforcement including control, education, and enlightenment would be one of the big reasons.

【IP Law Legislation】 Q: Why does it take such a long time for enacting the laws? It is an urgent issue to establish IP Association for raising awareness of IP and enlightenment. I will donate one million yen to establish Myanmar IP Association. (Applause) A: The enactment of IP laws takes time because it takes a process of cooperation among concerned ministries and agencies. It is also required to fulfill the requirements of TRIPS Agreement. We have to comply with TRIPS Agreement as a member nation of WTO. We would like to enact the IP laws to attract foreign investment. We need to protect not only our rights but also other’s rights. The law to be newly enacted in Myanmar will comply with international standards.

【Protection of Trade Secret】 Q: As to the trade secret referred to in the presentation, what should we do in order to protect our technology? A: The current draft doesn’t include trade secret. That’s a problem. Even if Patent Law is enacted, Coca-Cola will not be registered as a patent. The protection of undisclosed information which is important for enterprises is prescribed under the TRIPS Agreement. A number of laws need to be legislated for technological development. A: Unless intellectual property and trade secret are properly protected, technology transfer will not be made. For that purpose laws relating protection of trade secret and technology transfer are also required to be developed.

【JICA’s support】

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Q: Why does JICA provide assistance to Myanmar? Is it JICA’s own decision for its own benefit? Or did the government of Myanmar request to Japan? What significance does the development of IP legislation have for Myanmar? A: It’s totally not for the benefit of JICA. Japan and Myanmar have agreed assistance and cooperation in various fields not limiting to laws. Under such circumstances MOST requested assistance to Japan and concluded an agreement with JICA according to my understanding. A: TRIPS Agreement is the minimum standard and Myanmar has an obligation to comply with it. As was reported by Mr. Kinoshita, Myanmar is ranked the lowest in the IP system and international competitiveness ranking. This is not because Myanmar infringes IP but because infringing goods are manufactured in other countries and are brought into Myanmar. It was unfortunate that politics in Myanmar was unstable, which made education and level of development fall far behind other countries. Now, Myanmar needs to develop laws which suit our current situation. In 1994-1995 Myanmar was a socialist nation. After that the government has changed and we promote democracy at present. The legislation should be changed in accordance with the actual situation. It was in 1994 that MOST initiated the work of enacting IP laws. Due to the unstable political situation, unfortunately, enactment of the laws has not yet finished. Japan, WIPO, and other organizations are supporting Myanmar out of their consideration. JICA is assisting Myanmar not for its own benefit.

4. Workshop on 5 February, 2014 (Mandalay)

4.1 Outline

A workshop in awareness of intellectual property for the private sector, hosted jointly by JICA and UMFCCI.

①Title JICA/UMFCCI joint workshop: Impact and Power of Intellectual Property Laws “How do they benefit Business” ②Time and date: 1:30 PM to 6:30 PM on Wednesday, 5 Feb., 2014 ③Venue: Mandalay Region Chamber of Commerce & Industry (MRCCI) Ball Room, Mandalay ④Participants About 180 participants (private enterprise, the legal profession, industry organizations, and academia) ⑤Program [Opening] Welcome Speech by UMFCCI, U Aung Kyi Soe, Joint Secretary General, UMFCCI Special Remarks by Mr. Kinoshita, Kyoto Comparative Law Center

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[Part 1] “IP Office and IP Laws in Myanmar” Dr. Saint Thandar Tun, Assistant Director, MOST “Power of IP: IP as engine for economic growth” Mr. Takahiko Kinoshita “International Framework of IP” Mr. Takamitsu Shigetomi “What is Intellectual Property Law” Mr. Toshiya Furusho Coffee Break [Part 2] “New Intellectual Property Law and IP Office of Myanmar” U Than Maung or U Thein Aung “How is your business benefited by IP” U Than Maung or U Thein Aung Questions and Answers [Closing] Closing Remark by President of MRCCI

4.2 Presentation outlines

① Introduction to New IP Laws and IP Office in Myanmar (Dr. Saint Thandar Tun) *presentation in Burmese She began with a detailed explanation of the formulation of four laws on intellectual property drafted by Myanmar’s Ministry of Science and Technology (MOST). Much emphasis was placed on the effort made to educate and correlate with other government agencies as well as with the private sector. Additionally, the responsibilities of the IP Office and its organization were explained in detail.

②Power of IP: IP as an Engine of Economic Growth (Kinoshita) Mr. Kinoshita discussed the importance of IP to business from the perspective of overseas trade and investment as well as growth of domestic industry. After providing objective indicators and the future direction of Myanmar’s position in the international community, he placed special emphasis on the importance of IP as a driving force for progress.

③International Framework of IP (Shigetomi) After explaining the principles of territoriality and IP independence as essential elements of the international framework for the IP system, he introduced international treaties for major categories of IP. Also, while touching upon international treaties to which Myanmar is a party,

- 166 - he paid particular attention to the TRIPs Agreement.

④What are Intellectual Property Laws (Furusho) After providing a definition of intellectual property, he also explained different categories of IP. Then, after providing a comparison of things that constitute IP, its protection, and its registration as well as government agencies responsible for these issues, he used diagrams to explain major points of existing laws. Finally, he provided concrete examples in discussing the Unfair Competition Prevention Law and the basics of trade secrets.

⑤Trademark Registration and Cautionary Notice (U Than Maung) *presentation in Burmese He introduced examples of a wide variety of trademarks registered in Myanmar. For example, concrete examples of letters, signs, symbols, , collective trademarks, service marks, audible trademarks, trade names, and established trademarks were shown, and their importance to businesses was emphasized.

⑥Better IP Better Economy (U Myint Lwine) *presentation in Burmese He emphasized the importance of IP workshops such as this one and reported on how IP impacts business in terms of trade, investment, R&D, and CSR.

4.3 Q&A Session

【Questions to MOST】 Q: I think that the public needs to be better informed about the IP Office. There are no specialists in IP at the Union of Myanmar, and the public is not well informed on these issues. A (MOST): IP awareness is certainly an important topic about which the public must be educated. For example, in Japan, children are taught about IP by having them draw pictures and then explaining to them that the person who creates a picture has the right to it. Our government is receptive to these ideas and wants to promote this type of activity. A (MOST): Lack of human resources is a problem. In terms of explanation to the public, we invited private sectors to the meeting with the WIPO. WIPO offered two choices. One was to place the IP office under the presidential office. The other was to place it under a certain Ministry. The Parliament is expected to decide this issue.

【Questions about IP】 Q: If a patented product is produced using a different manufacturing process, does that result in a new patent? A: (Japan) This is what happens in Japan. If a new manufacturing process is invented, a new patent can be obtained. Patents are available for inventions of things and for inventions of methods for producing things. If the thing itself is in the , the patent holder must

- 167 - be able to prove that the other party is using a patented manufacturing method to make products.

Q: At present, even government agencies are using software without obtaining licenses, but what will happen with the IP Law comes into effect? A: (Japan) If government agencies are using unlicensed software, it will be a problem, irrespective of whether the use is by the government or by individuals. A: (Japan) If you have been using unlicensed software until now, there is no need to think that you have to stop using them just because a new copyright law has come into effect. That act is not allowed even at this time. You need to change the way of thinking that once a framework that enables the use of copyrighted materials legally complying with the new rules, there should be no problem. And in doing so, you create the basis for a sound market.

【IP and Business】 Q: Jade is one of Myanmar’s natural resources, most of which is machined in China. In emphasizing the importance of IP for businesses, won’t it be important to incorporate IP into businesses to do this? A: (MOST) We are proceeding on that basis. To do this, it will be important that the law be easy to understand. Therefore, we are working together with the public, especially over the past two years. During 2012, many states and regions also participated.

Q: We have learned that a patent for Thanakha has been applied for in Japan, under the title Manufacturing Method that Maximizes the Effect of Thanakha Power (Application No. 2010-31781). There is a Myanmar company that is planning on applying for a similar patent in Thailand for Thanakha cosmetics. If the Japanese patent is granted, will that prevent us from using it in Myanmar? What should we do? A: (Myanmar) Patents are territorial, so even if a patent is granted in Japan, it does not affect usage in Myanmar. A: (MOST) This is an issue related to Geographical Indication, or GI. GI enables proper evaluation of qualities and characteristics peculiar to a particular region. Registration is required to receive protection under GI. One thing that requires clarification, however, is who should register what by when. A: (Japan) GI is not the only issue with Thanakha. It also falls under the Convention on Biological Diversity (CBD) and Traditional Knowledge (TK). There are many traditions in Myanmar that fall into this category and Thanakha is just one of them. It is important that understanding of IP be heightened in Myanmar, so that these wonderful traditions and genetic resources can be property handled. I hope you will also take a close look at the situation in neighboring countries, such as India.

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5. Summary of the Seminars and Workshops

5.1 Major points of discussion

The following five major points of discussion were identified during seminars for employees of government agencies and workshops for the general public.

(1) The importance of IP awareness seminars All the seminars and workshops were well attended. This can be seen as an indication that, although there is significant interest in the intellectual property system, sufficient information has yet to be provided, most individuals are not sufficiently knowledgeable about the basics of the IP system. Given the uncertainty over how it will affect existing businesses, there are many who are concerned about what will happen. For example, many of the questions were about differences in Myanmar’s IP system and that of other countries, special characteristics of IP in Myanmar, types of trademarks and their protection, as well as copyrights and their registration. Although MOST has correlated widely with other government agencies in the drafting of IP legislation, it has yet to go beyond sharing that information. It appears that very little is being done to share information or discuss issues of concern with the general public through seminars and workshops. In fact, the Mandalay workshop held as a part of this project garnered such high interest precisely because it was the first of its kind in this area. These things are all an indication of the need to continue to hold IP seminars and workshops for a wide range of target audiences in order to deepen understanding of the IP system as well as to identify potential issues and their solution.

(2) Existing registration system and IP system registration There is a lack of understanding of the IP system, and there is also a lack of coordination between IP system registration and the existing registration system operated by government agencies. For example, explanation and correlation is necessary with government agencies operating existing systems for trademark registration, including the current registration system operated by the Ministry of Agriculture and Irrigation; coordination of trademark registration per the Merchandise Marks Act and the collective registration operated by the Ministry of Commerce; coordination of copyright registration per the Copyright Act and registration of publishers and printers operated by the Ministry of Information; and coordination trademark registration per the Merchandise Mark Act and company (trade name) registration operated by the Ministry of Planning and National Development.

(3) Traditional Knowledge Myanmar is a country rich in biological diversity, with significant potential in the fields of medicines, food, and cosmetics. Nevertheless, protection for genetic resources, traditional knowledge, and even folklore can be expected to fall outside the protection that will be provided

- 169 - in the four laws on intellectual property currently under study. This is a situation peculiar to developing countries, and there are many in Myanmar who have mentioned the need for a suitable mechanism that will provide protection and utilization of the many traditional medicines and national traits.

(4) Development of human resources There is a need in all fields to develop human resources with an understanding of IP. At present, the IP Office and the four laws on IP are being studied at MOST, but the goals of the IP laws include promoting foreign investment and economic development in Myanmar, to which end human resources must be developed on both macro- and micro-levels. In order for the IP registration system to function, it will be essential to train specialized examiners, and to link IP to economic development will also require the training of human resources with broad knowledge of IP. To this end, there are many who have mentioned the need to enhance capacity in government agencies, the judiciary branch, in higher education, and in the legal profession.

(5) Other issues affecting IP Other problems and issues affecting IP are shown below. Each is a serious issue for those doing business in Myanmar.

① IP of small enterprises and family businesses Private sector in Myanmar is not yet fully developed. The Ministry of Industry in particular, seeks to develop domestic industry through the establishment of joint ventures with overseas companies capable of effecting technology transfer. At present, however, most companies operate on a small- or even micro-scale. Because of this, these businesses will require clear directions on specific means of utilizing IP. In particular, given the lack of knowledge and understanding of IP, many are concerned that the IP system will hamper their existing businesses.

② Protection of farm goods Since agriculture is Myanmar’s major industry, many have expressed the need for effective protection. Also, it is rich in biological diversity and is home to numerous varieties of plant. In order to provide suitable protection and use for farm goods, the Ministry of Agriculture and Irrigation has worked to create a seed bank and establish grower’s rights. Also, it will be important for government agencies to work collectively rather than individually in studying an IP system for protection of genetic resources.

5.2 Results of Questionnaire Survey

In order to understand how much the participants have IP knowledge and experiences, a

- 170 - simple questionnaire survey was conducted.

Yangon Seminar (7 Dec., 2013): 48 responses among 232 participants Mandalay Seminar (5 Feb., 2014): 36 responses among 172 participants

(1) Attributes of respondents

The proportion of /scholar, business people, and others is 18, 13, and 16, respectively in Yangon, and that of lawyer/scholar was the largest, while the same is 8, 12, and 10, respectively in Mandalay, and that of business people was the largest.

Occupation

N％ N ％ Lawyer/Advocate 13 27% 13% Entertainment 24% 00% business Publication 5 10% 1 3% business Music business 0 0% 0 0% Brand business 2 4% 3 8% Manufactures 4 8% 8 22% Academia 5 10% 719% Other business 16 33% 10 28% 47 30

* “N” means “Number of Answers” * In any chart the figure in the left column is the result of Yangon Seminar and that in the right column is that of Mandalay Seminar. The percentage is not based on valid responses unless otherwise mentioned, but shows the percentage in the total respondents. Therefore, in the case of no answer, the total does not become 100%.

As for age, many of the participants were relatively young in Yangon, while about half of them was 30’s to 50’s in Mandalay.

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Age

N％ N ％ less than 20 years old 1 2% 0 0% 21 to 30 years old 20 42% 7 19% 31 to 40 years old 6 13% 8 22% 41 to 50 years old 8 17% 9 25% 51 to 60 years 7 15% 7 19% over 61 years old 6 13% 5 14% 48 36

Both in Yangon and Mandalay men were a little more than women (male: 53% in Yangon, 67% in Mandalay), and 97% was Myanmar in terms of nationality.

(2) Knowledge of Intellectual Property

As to the question, “Do you have knowledge on IP?”, 42 respondents (88%) in Yangon and 23 respondents (64%) answered “Yes” in Mandalay. It seems they have acquired the knowledge by attending seminars and workshops as well as reading books.

IP Knowledge

N ％ N ％ Yes 42 88% 2364% No 5 10% 9 25% 47 32

How to get IP knowledge (multiple answers)

N ％ N％ seminar/workshop 26 62% 13 57% publication/books 28 67% 10 43% broadcasting/news 8 19% 1 4% internet 15 36% 29% others 8 19% 8 35%

*The percentage indicates those who marked respective items on the left column among those who answered “yes”.

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(3) IP and Business

Concerning the question, “Do you utilize IP in your business?”, 21 respondents (44%) in Yangon and 20 respondents (56%) in Mandalay answered “Yes”. Considering that the figure includes students and scholars in total, we may well understand the majority of business people utilize IP.

Utilize IP

N％ N ％ Yes 21 44% 2056% No 20 42% 12 33% 41 32

As for the question, “Have you ever encountered any trademark/copyright infringement in your business?”, 17 respondents (35%) in Yangon and 9 respondents (25%) answered “Yes”. This includes those who infringed (specifically, use of pirated computer software) and also those who were infringed indicating “ illegal use of computer software”.

IP Infringement

N％ N ％ Yes 17 35% 925% No 24 50% 24 67% 41 33

Regarding the question, “Do you think IP laws benefit your business?”, 31 respondents (65%) in Yangon and 28 respondents (78%) in Mandalay answered “Yes”, while, as to the question “Do you think IP will benefit mainly for foreign companies?”, 31 respondents (65%) in Yangon and 23 respondents (64%) in Mandalay answered “Yes”.

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Benefit business

N％ N ％ Yes 31 65% 2878% No 5 10% 0 0% 36 28

Benefit foreign companies

N％ N ％ Yes 31 65% 2364% No 11 23% 514% 42 28

As the most interesting IP field, many picked up trademark and patent, followed by copyright, industrial design, utility model, and trade secret. Since there are relatively many respondents who marked “trade secret” which are not included in the IP four laws currently under legislation, we can assume that there are lawyers, scholars and business people who have high awareness.

Interesting IP field (multiple answers allowed)

N％ N ％ trademark 35 73% 27 75% copyright 10 21% 5 14% industrial design 10 21% 5 14% patent 29 60% 17 47% utility model 10 21% 6 17% new plant variety 1 2% 3 8% trade secret 9 19% 9 25% semiconductor layout 2 4% 1 3% geographic indication 2 4% 3 8% others 0 0% 1 3%

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Considering the result of questionnaire survey and the number of participants of the workshop, we’ve found that there are many people who have certain knowledge on IP despite the lack of IP system in Myanmar. The survey result also showed us their broad interest in IP. However, the largest number of respondents picked up “basic knowledge about IP” as the most useful presentation in the seminar, and many selected “basic knowledge about IP” and “IP laws and regulations” as the topics desirable for future workshop/seminar. Taking them into account, we may assume that the level of knowledge on IP at present is not so high although it’s broad (or the number of people who have a high level of IP knowledge is limited). In order to expand the base of human resources with IP knowledge and mind, it is important to continuously and periodically hold seminars, etc. targeting general public.

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Appendix 3 ASEAN Survey Report

APPENDIX 3 ASEAN survey report

This is an report on intellectual property administrative organizations, related laws and enforcement in ASEAN countries such as Indonesia, Malaysia, Thailand and Vietnam, as a reference for Myanmar in terms of planning and considering intellectual property administrative organizations and IP system in Myanmar1.

■ Indonesia

I. Outline of Intellectual Property Systems

1. Process of establishing the government office that administers intellectual property in Indonesia

(1) Process of establishment2

The legal framework for the enforcement of intellectual property rights (hereinafter referred to as “IPRs”, and intellectual property as “IP”) in Indonesia basically began during the Dutch colonization period. Prior to the declaration of Indonesian Independence, the government institution that handled intellectual property rights was inherited from the Netherlands, known as Hulpbureau Voor den Industrieele Eigendom. It only handled trademark and patent matters.

After Indonesian independence, the Indonesian government enacted specific regulations regarding trademarks, the result of the altering Dutch trademark regulations and established the Directorate of Patents, which handled the Registration of Trademarks, Patents and Copyrights in the 1960’s.

Since 1989, the DGIPR (Directorate General of Copyright, Patent and Trademark or Ditjen HCPM at the time) conducted many socializations and educations to the public regarding IPRs in order to raise the public’s awareness of the importance of IPRs, which is the main problem in enforcing IPRs in Indonesia. In conducting said socializations and educations, Indonesia received a great deal of assistance from foreign parties, such as the World Intellectual Property Organization (WIPO) and

1 This survey was conducted by “Nishimura & Asahi” (law firm) . 2 Staff members of the Directorate of Investigation of the DGIPR kindly accepted to be interviewed and provided us with relevant information stated in items (1) and (2). Rosetini & Partners, an Indonesian law firm, also closely cooperated with us in gathering the above information. We would like to take this opportunity to extend our sincere gratitude to them.

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the Australian government.

An important transitional milestone resulted from Indonesia’s joining the Agreement on Trade Related Aspects of Intellectual Property Rights (hereinafter referred to as “TRIPS Agreements”) in 1994 by being a member of the World Trade Organization (WTO). As a member state of TRIPS Agreement, Indonesia is obligated to standardize its regulations to be in conformity with TRIPS Agreement’s requirements. The above TRIPS Agreement membership triggered the promulgation of new laws regarding trade secrets, industrial designs and lay-out of integrated circuits in the year 2000 and the promulgation of laws to replace the old laws regarding trademark, patent and copyright in 2001 and 2002.

The DGIPR itself started to use its present nomenclature since 1998 under the Department of Justice (now the Minister of Law and Human Rights or MOLHR). The reason why DGIPR is under the MOLHR is because the enforcement of IPRs is related to the rights and status of a party.

(2) Dimensions of the DGIPR at the initial stage

As an organization, the DGIPR currently employs around 700 to 800 personnel, according to staff members of the Directorate of Investigation of the DGIPR. However, according to the Secretariat of the DGIPR, the recorded number of DGIPR is around 523 (as of 2012) personnel. Since 2011, the Directorate of Investigation itself has 18 personnel and there are two investigators on average posted at each DGIPR regional office in Indonesia’s 34 provinces. Staff members of the DGIPR explained that they have no data regarding the exact number of DGIPR personnel that existed during its initial and transitional stages.

(3) Government office dimensions that administers intellectual property in Indonesia

The DGIPR consists of the six Secretariat Directorates: Directorate of Patent, Directorate of Trademark, Directorate of Copyright, Industrial Design, Layout Design of IC & Trade Secret, Directorate of Cooperation & Development, Directorate of Technology & Information, and Directorate of Investigation.3

In 2012, the number of staff reached 523, of which the number of examination officers for patents was 132, the number of examination officers for industrial design was 65, and the number of

3 Aprilda Fiona Butarbutar, “Intellectual Property Rights in Indonesia”, Institute for Corporation Law and Society (Vol 36, March 2013) (Waseda University) (http://www.win-cls.sakura.ne.jp/pdf/36/03.pdf) (written in Japanese).

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examination officers for trademarks was 146.4

2. Summary of current IP laws and primary IP-related authorities

(1) Primary IP-related authorities a. Directorate General of Intellectual Property, Department of Law and Human Rights (“DGIPR”) (https://www.dgip.go.id/) * The official website written in English cannot be found. b. R.I. Police Headquarters * The official website written in English cannot be found. c. Directorate General of Customs and Excise (“DGCE”) (http://www.beacukai.go.id/wwwbcgoid/index.html) d. Central Jakarta Commercial Court * The official website written in English cannot be found. e. R.I. Supreme Court * The official website written in English cannot be found. f. National Team on the Tackling of Infringements of Intellectual Property Rights * The official website written in English cannot be found.

(2) Primary IP laws currently provided in Indonesia a. Law of the Republic of Indonesia No.14 of Year 2001 regarding Patents (http://www.imansjahputra.com/public/documents/law/Patent_Laws_14_2001.pdf)5 b. Law of the Republic of Indonesia Number 15 Year 2001 Regarding Marks (http://www.imansjahputra.com/public/documents/law/Trade_Mark_Laws_15_2001.pdf)

4 http://www.jpo.go.jp/torikumi/kokusai/kokusai2/pdf/ipcoop_asia-pacific/2011_02.pdf (see page 6) (written in Japanese).

5 Please note that the English translation is provided the law firm located in Jakarta, Iman, Sjahputra and Partners (http://www.imansjahputra.com/?id=10379), not a governmental authority in Indonesia. Same as for the other laws.

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c. Law of the Republic of Indonesia Number 31 Year 2000 Regarding Industrial Designs (http://www.imansjahputra.com/public/documents/law/Industrial_Design_Laws_31_2000.pdf) d. Law of the Republic of Indonesia Number 19 Year 2002 Regarding Copyright (http://www.imansjahputra.com/public/documents/law/Copyrights_Law_19_2002.pdf) e. Law of the Republic of Indonesia Number 32 Year 2000 Regarding Layout Designs of Integrated Circuits * No English translation can be found. f. Law of the Republic of Indonesia Number 30 Year 2000 Regarding Trade Secrets (http://www.imansjahputra.com/public/documents/law/Trade_Secret_Laws_30_2000.pdf)

3. Character of the four primary IP laws6

Patent Law Year of establishment / 2001 Year of latest amendment * Prior to the current law, the 1989 law (amended in 1997) was (= current law) applied. Definition of an Invention Invention shall mean an Inventor (defined in Article 1(3))’s idea that is displayed in any activity to solve a specific problem in the field of technology, either in the form of a product or process, or an improvement and development of a product or a process. (Article 1(2)) Requirements for Patent: novelty, inventive step and susceptibility of industrial patentability application. (Article 2(1)) Simple patent: novelty and practical use (Article 6) Grounds of A Patent shall not be granted to an Invention regarding: unregistrability a. any process or product of which the announcement and use or implementation contravenes the prevailing rules and regulations, religious morality, public order or ethics; b. any method of examination, treatment, medication, and/or surgery applied to humans and/or animals;

6 The content source of this section is mainly English translations of respective laws. In addition, due to constraints, the contents are a summary of these translations. Therefore, please refer to the original laws and consult an Indonesian lawyer for a certainty sake if you have a legal problem.

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c. any theory and method in the field of science and mathematics; or d. i. all living creatures, except micro-organisms ii. any biological process which is essential in producing plants or animals, except non-biological processes or microbiological processes. (Article 7) Term of protection Patent: 20 years from the filing date (no extensions). (Article 8) Simple patent: 10 years from the filing date (no extensions). (Article 9) Patent owners’ rights A Patent holder shall have the exclusive right to exploit his Patent and prohibit any other party who without his consent from: a. in the case of a product-Patent: making, using, selling, importing, renting out, delivering, or making available for sale or rental or delivery the Patented product; b. in the case of a process-Patent: using the Patented production process to make products and commit other activities as referred to in point a. (Article 16(1)) Acts of infringement Conducting the acts listed in the previous item without the patent owner’s consent in Indonesia shall be an infringement of the rights of the patent owner. (See Articles 118, 130, 131.) Limitations For educational purposes, research, experimentation, or analysis. (Article 16(3)) Remedies against acts of Civil remedies: infringement Payment of damages, injunctions, etc. (Articles 118, 134)

Criminal remedies: Imposing a fine of up to Rp.500,000,000 (five hundred million rupiahs) or imprisonment up to four (4) years or both. (Article 130)

Administrative remedies: No specific administrative remedies, including border control by customs. Notes There are provisions regarding compulsory licensing. (Articles 74- 87)

Trademark Law Year of establishment / 2001

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Year of latest amendment * Prior to the current law, the 1992 law (amended in 1997) was (= current law) applied. Definition of a trademark Trade Mark shall mean a Mark (defined in Article 1(1)) that is used on goods traded by a person or by several persons jointly or a legal entity to distinguish the goods from other goods of the same kind. (Article 1(2)) Service Mark shall mean a Mark that is used for services traded by a person or by several persons jointly or a legal entity to distinguish the services from other services of the same kind. (Article 1(3)) Requirements for Marks as regulated under this Law shall include Trade Marks and registration Service Marks. (Article 2) Grounds of Bad faith, no distinguishing features, having a similarity in its essential unregistrability part or in its entirety with a Mark owned by another party which has previously been registered for the same type of goods and/or services, constituting an imitation or resembling the name of a famous person, photograph, etc. (Articles 4-6) Term of protection 10 years from the filing date. Renewable for an unlimited number of terms, each 10 years. (Article 28) Trademark owners’ rights The right to a Mark is the exclusive right granted by the State to the owner of a Mark which is registered in the General Register of Marks for a certain period of time, to the owner to use said Mark or to grant permission to another party to use it. (Article 3) Acts of infringement Unlawfully using a registered Mark, that the other party holds, for goods and services which have a similarity in its essential part or its entirety with the owner’s Mark is an infringement. (Article 76) Remedies against acts of Civil remedies: infringement Payment of damages, injunctions, etc. (Article 76)

Criminal remedies: Imposing a fine of up to Rp.1,000,000,000 (one billion rupiahs) or imprisonment up to five (5) years or both. (Article 90)

Administrative remedies: Border control by customs, etc.

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Notes Parallel importations are not permitted.7

Industrial Design Law Year of establishment / 2000 Year of latest amendment (= current law) Definition of an industrial Industrial Design shall mean the creation of a shape, configuration, or design the composition of lines or colors, or lines and colors, or the combination thereof in a three or two dimensional form which gives an aesthetic impression and can be realized in a three or two dimensional pattern and used to produce a product, goods or an industrial commodity and a handy craft. (Article 1(1)) Requirements for Novelty (Article 2(1)) registration Grounds of Contrary to the prevailing laws and regulations, public order, religion, unregistrability or morality. (Article 4) Term of protection 10 years from the filing date (no extensions). (Article 5(1)) Industrial design The right holder to an industrial design shall have the exclusive right to owners’ rights exploit his industrial design and to prohibit others who without his consent make, use, sell, import, export and/or distribute the products that have been granted the right to the industrial design. (Article 9(1)) Acts of infringement Conducting the acts listed in the previous item without the industrial design owner’s consent in Indonesia shall be an infringement of the rights of industrial design owner. (See Articles 46, 54) Limitations For the purposes of experimentation and education. (Article 9(2)) Remedies against acts of Civil remedies: infringement Payment of damages, injunctions, etc. (Article 46)

Criminal remedies: Imposing a fine of up to Rp.300,000,000 (three hundred million rupiahs) or imprisonment up to four (4) years or both. (Article 54)

Administrative remedies: No specific administrative remedies, including border control by

7 See pages 229-230 of “Enforcement of IP in Asian countries” (No. 109 of Supplementary volume NBL) (Shōji- Hōmu, 2008) (written in Japanese).

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customs.

Copyright Law Year of establishment / 2002 Year of latest amendment * Prior to the current law, the 1982 law (amended in 1987 and 1997) (= current law) was applied. Definition of a work Work shall mean any result of works of an Author (defined in Article 1(2)), which show originality in the field of science, arts and literature. (Article 1(3)) Registration (or Registration is not necessary to be protected, however, registration of a notification) copyright is not only possible but recommended for a rights holder to clarify and protect his rights, especially in the case of enforcing infringement violations. To register a copyright, a rights holder should submit an application form to the Directorate of Copyright, Industrial Design, Layout Design of IC & Trade Secret of the DGIPR. The form should include the date of application, name and address of the applicant, and so on.8 Term of protection The Copyright on: a. books, pamphlets, and all other written works; b. dramas, musical dramas, dances, choreographic works; and so on shall be valid for the life of the Author and 50 years after his death. (Article 29(1))

The Copyright on: a. computer programs; b. cinematographic works; and so on shall be valid for 50 years as of the first publication. (Article 30(1)) Copyright owners’ right Copyright shall mean the exclusive right of an Author or a Copyright Holder to publish or reproduce his/her work, which emerges automatically after the creation of the work without prejudice to restrictions pursuant to the prevailing laws and regulations. (Article 2(1))

8 page 29 of the “Anti-copying and imitation manual (Indonesia) (version 2008)” (http://www.jetro.go.jp/world/asia/idn/ip/pdf/2008_mohou.pdf) (written in Japanese).

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An Author and/or a Copyright Holder of a cinematographic work and computer program shall have the right to give permission or to prevent any other person whom without his/her approval rents out the work concerned for commercial purposes. (Article 2(2)) Acts of infringement Conducting the acts listed in the previous item without the right in Indonesia shall be an infringement of the rights of a copyright holder. (See Articles 72) Limitations There shall be no infringement of Copyright for: a. publications and/or reproductions of State symbols and the national anthem in accordance with their original nature and so on. (Article 14)

Provided that the sources are fully cited, the following shall not be deemed to be Copyright infringement: a. the use of a work of another party for the purpose of education, research, scientific thesis, report writing, criticizing or reviewing an issue, provided that it does not prejudice the normal interests of the Author and so on. (Article 15)

The publication of a work by the Government through a radio, television broadcast and/or other means for State interest may be carried out without having to request permission from the Copyright Holder. (Article 18)

The right of the Copyright Holder as referred to in Article 56 shall not apply to any work which is in the hands of a party who has good intentions in obtaining the work solely for his own need and is not using it for any commercial purpose and/or any interest related to commercial activities. (Article 57) Remedies against acts of Civil remedies: infringement Payment of damages, confiscation of the goods published or the results of reproducing the work, etc. (Article 56(1))

Criminal remedies: Imposing a fine of up to Rp.5,000,000,000 (five billion rupiahs) or imprisonment up to seven (7) years or both. (Article 72(1))

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Administrative remedies: Border control by customs, etc. Notes Related rights (rights of performers, producers of phonograms, broadcasting organizations) are also protected. (Article 49) Moral rights of authors are protected. (Article 24) Moral rights of performers are protected. (Article 55, 51)

II. Outline of enforcement regarding intellectual property rights

1. Administrative Enforcement

(1) Directorate General of Customs and Excise (“DGCE”) (http://www.beacukai.go.id/wwwbcgoid/index.html) a. Organization With respect to the organization of the DGCE, please see Attachment 1. b. Prior to 2012 -- inexpedience due to lack of regulations

 Indonesian Custom Law (established in 1995, amended in 2006) provides that, at the request of the owner or the holder of trademarks or copyrights, the Commercial Court may issue a warrant to the Customs Official to suspend temporarily the release of imported or exported goods that, on the basis of sufficient evidence, are suspected to be the result of violations of trademarks or copyrights protected in Indonesia.9  In addition, the law also provides that the Customs Official may suspend temporarily imported or exported goods that are suspected to be the result of violations of trademarks or copyrights; or that infringe on trademarks or copyrights themselves.10  However, prior to 2012, there were no laws or regulations stipulating how to request for issuance of a warrant by the Commercial Court and temporary suspension by the Customs Official provided in the Custom Law. Therefore, in practice, it was impossible for the rights holder to apply for the temporary suspension of counterfeiting goods or pirated goods by the DGCE.11

9 Article 54 of the Custom Law. Because no English translation of such law can be found, the explanation of the contents of that article is based on page 39 of the “Anti-copying and imitation manual (Indonesia) (version 2008).” (http://www.jetro.go.jp/world/asia/idn/ip/pdf/2008_mohou.pdf) (written in Japanese). 10 Article 62 of the Custom Law. The source is the same as Article 54. 11 http://www.jetro.go.jp/world/asia/idn/biznews/504715e6b90f0 (written in Japanese).

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c. New Supreme Court Regulations issued in 2012 On July 30, 2012, the Supreme Court issued a Supreme Court Regulation No. 4 of 2012 regarding a Temporary Suspension Order and No. 5 of 2012 regarding a Temporary Injunction.

 Supreme Court Regulation No. 4 of 2012 regarding a Temporary Suspension Order A temporary suspension order is a written order from the chief of the commercial court to the local custom officer to conduct a temporary suspension of imported and exported goods, based on proper evidence, presumed to be counterfeit goods that infringe on the copyright and trademark rights in Indonesia.12 13

 Supreme Court Regulation No. 5 of 2012 regarding a Temporary Injunction. A temporary injunction is an instruction issued by the Court that should be binding on all relevant parties based on the applicant’s request of violations of IPRs of Patent Law, Trademark Law, Industrial Design Law, and Copyright Law.14 15

By virtue of those new regulations, it became possible for the rights holder to request border control by the DGCD.

(2) Directorate General of Intellectual Property, Department of Law and Human Rights (“DGIPR”) (https://www.dgip.go.id/) a. Organization With respect to the organization of DGIPR, please see Attachment 2. b. Role regarding enforcement In March 2011, the new directorate, namely the Directorate of Investigation was established under the DGIPR, to realize law enforcement efforts in the field of IPRs.

12 http://www.legal500.com/c/indonesia/developments/22378 13 The English version of Supreme Court Regulation No.4 cannot be found. You may see the original version written in Indonesian on this website:

http://www.jetro.go.jp/world/asia/idn/ip/pdf/rule_2012-4_en.pdf 14 http://www.legal500.com/c/indonesia/developments/22378 15 The English version of Supreme Court Regulation No.5 cannot be found. You may see the original version written in Indonesian on this website:

http://www.jetro.go.jp/world/asia/idn/ip/pdf/rule_2012-5_en.pdf

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Civil Servant Investigators from the Directorate of Investigation have the authority to conduct investigations of criminal cases in the field of IP.16 c. Statistics The number of cases that the Directorate of Investigation received from 2011 to 2012 is as follows:17

Statistics Report on IP Infringement (2011 - 2012)

No. Year/ IP infringement Total Month Copyright Patent Trademarks Industrial Design 2011 2 0 26 6 34 2012 1 January - 1 - - 1 2 February 2 1 1 - 4 3 March - - - 1 1 4 April - - - - 5 May - - 2 - 2 6 June - - 2 1 3 7 July - - 6 - 6 8 August 2 - 1 - 3 9 September - - 2 - 2 10 October 1 - 4 3 8 11 November 1 - 3 - 4 12 December - - 3 1 4

16 See page 2 of the article “IP Law Enforcement Issues In Indonesia From A Practical Perspective” (http://www.fami- motorcycle.org/news/news_20130820012738_13.PDF), written by Cita Citrawinda Noerhadi. 17 See page 3 of the article “IP Law Enforcement Issues In Indonesia From A Practical Perspective” (http://www.fami- motorcycle.org/news/news_20130820012738_13.PDF), written by Cita Citrawinda Noerhadi.

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Status Report on IP Infringement (2011-2012)

IP Investigation Evidence not Notice of Request for Total Infringement Process found Commencement Case of Investigation Revocation by the Public Prosecutor Copyrights 2 1 1 3 Trademarks 19 1 4 17 Industrial 2 1 7 Designs Patents 1 1 Total 24 2 7 27 72 (%) (33%) (3%) (10%) (38%) (100%)

(3) The National Task Force for IPRs Violation Prevention (“National IP Task Force”)

 In the early 2000s, the government of Indonesia established a liaison committee among the DGIPR, DGCE, courts, prosecutors’ office and police, in order for them to exchange information to strengthen IP related enforcement. After that, the number of members of governmental entities increased from five to ten. In 2006, the government of Indonesia established the National IP Task Force, based on the above liaison committee.18

 Primary tasks of the National IP Task Force are to:  draft national level legislation against IP infringement,  set up national level measures against IP infringement,  educate people regarding IP related issues,  strengthen bilateral, multilateral, or inter-area cooperation to fight against IP infringement, and so on.19

 On the other hand, it is pointed out that substantive activities of the National IP Task Force are limited because (i) the number of members increased, and (ii) respective members (governmental entities) needed more time to gather and coordinate information and to obtain

18 http://www.customs.go.jp/mizugiwa/chiteki/pages/UFJ/honbun_id.pdf (written in Japanese) 19 http://www.customs.go.jp/mizugiwa/chiteki/pages/UFJ/honbun_id.pdf (written in Japanese)

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internal clearance; and therefore it became more difficult for the Task Force to make adjustments among the members.20 The Office of the United States Trade Representative pointed out in the 2007 Special 301 Report and 2009 Special 301 Report that the National IP Task Force is ineffective.21

2. Civil Enforcement

 As partly stated in Chapter I, respective IP-related substantive laws provide for civil remedies:  Patent Law (Article 118);  Trademark Law (Article 76);  Industrial Design Law (Article 46);  Copyright Law (Article 56);  Layout Designs of Integrated Circuits Law (Article 38(1));  Trade Secret Law (Article 11(1)); and so on.

 To file a litigation proceeding regarding IP related infringement, a plaintiff must file a complaint with the Commercial Court.

 However, civil remedies are not utilized as common remedies against IP infringement, because civil remedies cost a great deal, take a long time, and on the other hand, the number of successful examples as remedies for the rights holder is quite limited.22 23 In addition, prior to 2012, there was also the issue that a plaintiff (the rights holder) cannot apply for a temporary injunction, due to the lack of regulations, regardless of the existence of provisions for the respective substantive laws, as stated above.

3. Criminal Enforcement

Due to circumstances rendering civil enforcement ineffective, criminal enforcement is the primary measure against IP infringement in Indonesia.

20 http://www.customs.go.jp/mizugiwa/chiteki/pages/UFJ/honbun_id.pdf (written in Japanese) 21 http://www.keionline.org/sites/default/files/ustr_special301_2007.pdf (2007 Special 301 Report) (see page 31) http://www.ustr.gov/sites/default/files/Full%20Version%20of%20the%202009%20SPECIAL%20301%20REPORT .pdf (2009 Special 301 Report) (see page 19) 22 See page 55 of the article “As a professional of IPRs in Indonesia” (Patent 2010) (Vol.63 No.1) by Yoshie Yamamoto.

23 http://www.globalipdb.jpo.go.jp/jpowp/wp-content/uploads/2013/09/62760b3eabe54705e01119d93d67b97e.pdf (see page 16) (written in Japanese)

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(1) Investigations and raids by Police

 In general, under Indonesian IP laws, accusations from victims (rights holders) are necessary for offenders to be prosecuted, except for in the case of copyright infringement. Therefore, Police begin investigations only after receiving accusations from rights holders, except for in copyright infringement cases.

 Investigations by Police include raids.

 Rights holders are expected to cooperate with police regarding the gathering of proofs in a positive manner.24 25

 Rights holders may propose conditions for settlement to Police and then begin negotiating with alleged infringers. If settlement is reached, rights holders withdraw their accusations. If there is no settlement, rights holders request that the Police transfer the matter to the Prosecutors.

24 http://www.globalipdb.jpo.go.jp/jpowp/wp-content/uploads/2013/09/62760b3eabe54705e01119d93d67b97e.pdf (see page 21) (written in Japanese).

25 Pages 37-38 of the “Anti-copying and imitation manual (Indonesia) (version 2008)” (http://www.jetro.go.jp/world/asia/idn/ip/pdf/2008_mohou.pdf) (written in Japanese).

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 The number of IP-related raids from 2006 to 2010, reported by Indonesian Police is as follows:26

Law of 2006 2007 2008 2009 2010 Patent 0 6 1 3 0 Industrial Design 5 17 3 5 3 Trademarks 48 83 18 61 34 Copyrights 1439 598 209 333 53 Layout Designs 0 0 0 1 0 of Integrated Circuits Varieties of 0 0 0 0 0 Plants Trade Secrets 1 1 0 1 1 Total 1,493 705 231 403 91

(2) Criminal Proceedings

 The decision to indict is based on the Prosecutors’ discretion.

 Criminal proceedings are under the jurisdiction of the District Courts. It is pointed out that, because District Courts do not have much experience handling IP cases, judgments that have a sufficient deterrent effect do not occur in most cases.

 Regarding punishment, please see Chapter I and the respective laws.

26 http://www.globalipdb.jpo.go.jp/jpowp/wp-content/uploads/2013/09/62760b3eabe54705e01119d93d67b97e.pdf (see page 13) (written in Japanese).

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Attachment 1 (II Indonesia) DGCE

Attachment 2 (II Indonesia) DGIPR

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III. Registration flow regarding the primary four IP rights

1. Flowchart procedures

With respect to the application and registration flowchart procedures regarding patents, trademarks, industrial designs and copyrights, please see Attachment 1.27

2. Application and registration outline

Patents Language An application for patents shall be filed in the Indonesian language. (Article 24(1) of the Patent Law28) An applicant may file an application with a patent description and claims written in English, but he must submit an Indonesian translation thereof within 30 days from the filing date. (Article 30(2)) of the Patent Law) Fees Basic fee for the application: 575,000 IDR Fee for grant of patent certificate: 250,000 IDR29 Where to apply An applicant shall submit necessary documents to the Directorate General of the Directorate General of Intellectual Property Rights (DGIPR). (Articles 20, 22 - 24 of the Patent Law) The filing of a patent application may be made directly at the Patent Office or delivered to the Patent Office through the postal service. (Article 8(1) of Decision of the Minister of Justice of the Republic of Indonesia Number: M.06- HC.02.10, Year 1991, concerning the Procedure to File Patent Applications30) Examination Not only formal examinations but also substantive examinations are conducted. The Directorate of Patent of DGIPR is the agency in charge of examinations. For the purpose of conducting substantive examinations,

27 Pages 37-40 of the “Handbook of Protection of Intellectual Properties in ASEAN and India,” (Japan External Trade Organization, 2013). (http://www.jpo.go.jp/torikumi/mohouhin/mohouhin2/manual/pdf/asean1.pdf (written in Japanese)

28 http://www.jpo.go.jp/shiryou_e/s_sonota_e/fips_e/pdf/indonesia_e/e_tokkyo.pdf 29 Page 5 of the “Mini Guide for Systems regarding Industrial Properties Rights in Indonesia,” (2012, Japan Institute for Promoting Invention and Innovation). (http://www.globalipdb.jpo.go.jp/jpowp/wp- content/uploads/2013/09/ef7c8d3478edea85ee0838dfb1f6075c.pdf) (written in Japanese) 30 http://www.wipo.int/wipolex/en/text.jsp?file_id=255495

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the DGIPR may request expert assistance and/or utilize necessary facilities from other Government agencies or may request the assistance from examiners of patent offices from other countries. (Article 50(1) of the Patent Law) Notice (1) An application which is filed by an inventor or an applicant who does not reside or does not have a fixed domicile in the territory of the Republic of Indonesia must be filed through his attorney in Indonesia. (2) The inventor or applicant as referred to in paragraph (1) shall declare and choose his residence or legal domicile in Indonesia for the purpose of such application. (Article 26 of the Patent Law) Publication of patent The Directorate General shall publish applications that have applications fulfilled the requirements of Article 24 (formal requirements). (Article 42(1) of the Patent Law) The publication shall be carried out by: a. placing such publication in the Official Patent Gazette published periodically by the Directorate General; and/or b. placing such publication on the publication board exclusively provided for such purpose by the Directorate General which may be easily and clearly seen by the public. (Article 43(1) of the Patent Law, Article 46(1) of the Patent Regulations31) Publication of Granted The Patent Office shall record in the Patent Rolls each patent which has patents been granted. The Patent Office shall announce each patent which has been granted in the Patent Official Gazette. (Article 61 of the Patent Regulations) Any person may inspect the Patent Rolls and may obtain an excerpt therefrom by paying a fee, the amount of which shall be determined by the Minister. (Article 62(1) of the Patent Regulations)

Trademarks Language An application for trademarks shall be filed in the Indonesian language. (Article 7(1) of the Trademark Law32) Fees 600,000 IDR for up to three (3) items in the specification of

31 http://www.jpo.go.jp/shiryou_e/s_sonota_e/fips_e/pdf/indonesia_e/e_tokkyo_kisoku.pdf 32 http://www.jpo.go.jp/shiryou_e/s_sonota_e/fips_e/pdf/indonesia_e/e_shouhyou.pdf

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goods/services. An additional fee of 50,000 IDR for additional items exceeding the three (3) is charged.33 Where to apply An applicant shall submit necessary documents to the Directorate General of the DGIPR. (Article 7(1) of the Trademark Law) Examination Not only formal examinations but also substantive examinations are conducted. The Directorate of Trademark of DGIPR is the agency in charge of examinations. The substantive examination shall be conducted by the examiner at the Directorate General. (Article 19(1) of the Trademark Law) Notice An Applicant must provide his or his agent’s address in an application form. (Articles 7(1)(b)(c) of the Trademark Law) An application that is filed by an applicant who resides or is permanently domiciled outside the territory of the Republic of Indonesia must be filed through a proxy in Indonesia. (Article 10(1) of the Trademark Law) The applicant as referred to in paragraph (1) shall state and choose the residence of his proxy as his legal domicile in Indonesia. (Article 10(2) of the Trademark Law) Publication of There is no publication system for trademark applications. trademark applications However, where the examiner concludes in the result of the substantive examination that an application can be approved for registration, the Directorate General with the approval of the Director General shall announce the application in the Official Gazette of Marks. (Article 20(1) of the Trademark Law) Within a period of at the latest ten (10) days as of the date of approval for registration, the Directorate General shall announce the application in the Official Gazette of Marks. (Article 21 of the Trademark Law) During the period of announcement, a person or legal entity may file an objection to an application, in writing to the Directorate General. (Article 24(1) of the Trademark Law) The Trademark Act provides that, in the case where an objection is filed, a re-examination of the application shall be conducted by the Directorate General. (Article 26(1) of the Trademark Law) However, in fact, it

33 Page 17 of the “Mini Guide for Systems regarding Industrial Properties Rights in Indonesia.”

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looks as if the Directorate General conducts re-examinations of every application regardless of whether there is a filing of an objection.34 Publication of Where the examiner concludes in the result of the examination that the registered trademarks objection cannot be accepted, with the approval of the Director General, the application shall be registered in the General Register of Marks. (Article 26(5) of the Trademark Law) Any person may file a request for the official excerpt of a Mark Certificate that is recorded in the General Register of Marks. (Article 27(4) of the Trademark Law)

Industrial Designs Language An application for industrial design shall be filed in the Indonesian language. (Article 11(1) of the Industrial Design Law35) Fees Application fee for an industrial design: 300,000 IDR36 Where to apply An applicant shall submit necessary documents to the Directorate General of the DGIPR. (Article 11(1) of the Industrial Design Law) Examination An application which has fulfilled the requirements as referred to in Article 4 and Article 11 (formal requirements) shall be announced by the Directorate General at the latest three (3) months from the filing date, by the placement on a medium provided exclusively for this purpose, which can be easily and clearly seen by the public. (Article 25 of the Industrial Design Law) Notice An Applicant must provide his or his agent’s address in the application form. (Articles 11(3)(c)(d) of the Industrial Design Law) Publication of There is no publication system for industrial design applications. industrial design However, starting from the commencement of the announcement as applications referred to in Article 25(1), any party may file an objection that includes substantive matters in writing with the Directorate General by the payment of fee as regulated in this Law. (Article 26(1)) of the Industrial Design Law) The law provides that, where there is an objection against an application as referred to in paragraph (1), the examiner shall conduct a substantive

34 Pages 20-21 of the “Anti-copying and imitation manual (Indonesia) (version 2008),” (http://www.jpo.go.jp/torikumi/mohouhin/mohouhin2/manual/pdf/indonesia1.pdf) (written in Japanese). 35 http://www.jpo.go.jp/shiryou_e/s_sonota_e/fips_e/pdf/indonesia_e/e_ishou.pdf 36 Page 12 of “Mini Guide for Systems regarding Industrial Properties Rights in Indonesia.”

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examination. (Article 26(5) of the Industrial Design Law) However, in fact, the Directorate General conducts a substantive examination of every application regardless of the filing of an objection.37 Publication of A granted industrial design is recorded in the General Register of registered industrial Industrial Designs and announced in the Official Gazette of Industrial designs Designs. (Articles 5 and 8 of the Industrial Design Law)

Copyrights Language An application for copyright registration shall be filed in the Indonesian language. (Article 37(2) of the Copyright Law38) Fees Computer program: 200,000 IDR Other than by computer program: 300,000 IDR39 Where to apply An application for copyright registration of a work shall be filed at the Directorate General. (Article 37(2) of the Copyright Law) Examination There is only a formal examination. There is no substantial examination.

Publication A registered work is recorded in the General Register of Works, which can be seen by anyone without any payment of a fee. (Article 35(2) of the Copyright Law) The registration shall be announced by the Directorate General in the Official Gazette of Works. (Article 40(2) of the Copyright Law)

37 Page 14 of the “Anti-copying and imitation manual (Indonesia) (version 2008).” 38 http://www.imansjahputra.com/public/documents/law/Copyrights_Law_19_2002.pdf 39 See page 10 of the following file (http://www.pnp-ip.com/main/charges.pdf).

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Attachment1 (III Indonesia) Patents

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Trademark

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Industrial Design

Copyright

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■ Malaysia

I. Outline of Intellectual Property Systems

1. Process of establishing the government office which administers intellectual property in Malaysia

(1) Process of establishment

The Intellectual Property Corporation of Malaysia ( hereinafter referred to as “MyIPO”) has explained on its website as follows40:

Prior to 1983, intellectual property rights ( hereinafter referred to as “IPRs”, and intellectual property as “IP”)) in Malaysia were administered by Pejabat Cap Dagangan dan Jaminhak. This Office changed its name to Pejabat Cap Dagangan dan Paten in 1983, and was placed under the jurisdiction of the then-Ministry of Trade and Industry. On 27 October 1990, the Ministry was restructured, and the Office was placed under the Ministry of Domestic Trade and Consumer Affairs, which is now known as the Ministry of Domestic Trade, Co- operative and Consumerism (hereinafter referred to as the “MDTCC”), and changed its name to the Intellectual Property Division (hereinafter referred to as the “IPD”).

To respond to the development of intellectual property at the domestic and global levels, the IPD was corporatized on 3 March 2003, and became known as the Intellectual Property Corporation of Malaysia (hereinafter referred to as the “PHIM”), with the enforcement of the Intellectual Property Corporation of Malaysia Act 2002.41 The Corporation took an important first step of rebranding when the acronym “PHIM” became “MyIPO” on 3 March 2005, on the inaugural National Intellectual Property Day.

(2) Dimensions of MyIPO at the initial stage42

40 http://www.myipo.gov.my/maklumat-korporat

41 http://www.myipo.gov.my/documents/10180/15222/Intellectual%20Property%20Corporation%20of%20Mala ysia%20Act%202002%20%28Act%20617%29.pdf 42 Staff members of MyIPO kindly sent us detailed information for this project, pursuant to our request. We would like to take this opportunity to extend our sincere gratitude to them.

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a. Organizations When MyIPO was the IPD, the IPD was tasked to administer the Patents Act 1983, the Trade Marks Act 1976, and the Copyright Act 1987. The Industrial Designs Act 1996 came into force in 1999, followed by the Layout-Designs of Integrated Circuits Act 2000, and in 2001, the Geographical Indications Act 2000 came into force; and therefore the IPD (later PHIM, then MyIPO) has administered those laws, also. With respect to the organization chart of the IPD, please see Attachment 1.

When PHIM was established, it bore an obligation to accept into its employment every person in the employment or service of the IPD (Article 21(1)). With respect to the organization chart of PHIM as of 2003, please see Attachment 2 or page five (5) of Annual Report 2003 of PHIM.43 b. Numbers of staff The transitions of numbers of staff have been as follows:

(a) Prior to 1983 There were five (5) patent examiners and 10 trademark examiners in charge of examinations in Pejabat Cab Dagangan dan Jaminhak.

(b) October 1990 – February 2003 A total of 153 staff was employed before the corporatization of the IPD. With respect to the breakdown, please see Table 1 of Attachment 3.

(c) In 2003 The number of staff of PHIM increased to a total of 260 positions. With respect to the breakdown, please see Table 2 of Attachment 3.

(d) In 2013 The number of staff of MyIPO is currently total 432. The breakdown is as follows: examiners: 165 (patent examiners: 78, trademark examiners: 63, trademark hearing examiners: 16, industrial design examiners: 8) staff in the Copyright Division: 12, and so on.

2. Summary of current IP laws and primary IP-related authorities

43 http://www.myipo.gov.my/documents/10180/24733/1-26.pdf

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(1) Primary IP-related authorities a. Intellectual Property Corporation of Malaysia (“MyIPO”) (http://www.myipo.gov.my/home) b. Ministry of Domestic Trade, Cooperative and Consumerism (“MDTCC”) (http://www.kpdnkk.gov.my/en/home;jsessionid=A40B38D3E87AC1EB002CA958C872A99 7) c. Malaysian Courts (http://www.kehakiman.gov.my/?q=en/node/673) d. Attorney General of Malaysia (http://www.agc.gov.my/index.php?option=com_content&view=frontpage&Itemid=1&lang=e n) e. Royal Malaysian Police * The official website written in English cannot be found. f. Royal Malaysian Customs Department (http://www.customs.gov.my/index.php/en) g. Kuala Lumpur Regional Arbitration Center (“KLRCA”) (http://www.klrca.org.my/Scripts/default.asp) * Not a governmental organization.

(2) Primary IP laws currently provided in Malaysia a-1. Patent Act (established in 1983, finally amended in 2006) (https://www.jpo.go.jp/shiryou_e/s_sonota_e/fips_e/pdf/malaysia/patents_act.pdf) (the 2006 version) a-2. Patent Regulations (finally amended in 2011) (http://www.myipo.gov.my/documents/10192/147585/patents_regulations-2011.pdf) (the 2011 version) b-1. Trademark Act (established in 1976, finally amended in 2002)

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(https://www.jpo.go.jp/shiryou_e/s_sonota_e/fips_e/pdf/malaysia/trademark_act.pdf) (the 2002 version) b-2. Trademark Regulations (established in 1997, finally amended in 2011) (http://www.myipo.gov.my/documents/10180/22873/Trade%20Marks%20Regulations%20199 7%28incorporated%29.pdf) (the 2011 version) c-1. Industrial Designs Act (established in 1996, finally amended in 2013) (http://www.myipo.gov.my/documents/10192/396014/Act%20ID1996%28Act%20552%29% 20-online%20version%20updated%20Jan%202013.pdf) (the 2002 version) (http://www.myipo.gov.my/documents/10192/83926/id-act-amendment2013eng.pdf) (The 2013 amendment act) c-2. Industrial Designs Regulations (established in 1999, finally amended in 2013) (http://www.myipo.gov.my/documents/10192/83926/Industrial%20Designs%20Regulations% 201999-230213.pdf) (the 2012 version) (http://www.wipo.int/wipolex/en/text.jsp?file_id=305260) (Industrial Designs (Amendment) Regulations 2013) d-1. Copyright Act (established in 1987, finally amended in 2012) (http://www.myipo.gov.my/documents/10192/105238/Copyright%20Act%201987%28Amend ment2012%29.pdf) (the 2012 version) d-2. Copyright (License to Produce and Publish a Translation of a Literary Work in the National Language) 1987 (http://www.myipo.gov.my/documents/10180/23047/Copyright%20Regulations%201987.pdf) d-3. Copyright (Notice of Prohibition of Import) Regulations 1987 (http://www.myipo.gov.my/documents/10180/23047/Copyright%20%28Notice%20of%20Pro hibition%20of%20Import%29%20Regulations%201987.pdf) d-4. Copyright Application (to Other Countries) 1990 (http://www.myipo.gov.my/documents/10180/23047/Copyright%20Regulations%201990.pdf) d-5. Copyright (Licensing) Regulations 2000 (http://www.myipo.gov.my/documents/10180/23047/Copyright%20Regulations%202000.pdf) d-6. Copyright (Voluntary Notification) Regulations 2012 (http://www.myipo.gov.my/documents/10192/105238/regulationsnotification2012.pdf) d-7. Copyright (Licensing Body) Regulations 2012 (http://www.myipo.gov.my/documents/10192/105238/regulations-licensing2012.pdf) d-8. Copyright (Copyright Tribunal) Regulations 2012 (http://www.myipo.gov.my/documents/10192/105238/pua_20120713_COPYRIGHT.pdf)

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e. Layout-Designs of Integral Circuit Act (established in 2000) * The English translation cannot be found. f-1. Geographical Indications Act (established in 2000, finally amended in 2001) * The English translation of the original act cannot be found. (http://www.myipo.gov.my/documents/10180/26953/Geographical%20Indications%20%28A mendmend%29%20Act%202001%20A1141.pdf) (The amendment Act of 2001) f-2. Geographical Indications Regulations (established in 2001, finally amended in 2013) (http://www.myipo.gov.my/documents/10180/26953/Geographical%20Indications%20Regulat ions%202001.pdf) (the version of 2001) (http://www.myipo.gov.my/documents/10192/506443/gi-reg-15072013.pdf) (The summary guidelines of the amendment act 2013) g-1. Optical Discs Act (established in 2000, finally amended in 2006) (https://www.jetro.go.jp/world/asia/my/ip/pdf/opticaldisc_en.pdf) (the 2006 version) g-2. Optical Discs Regulations (established in 2000) (http://www.wipo.int/wipolex/en/text.jsp?file_id=128856) h-1. Trade Descriptions Act (established in 2011) (https://www.jetro.go.jp/world/asia/my/ip/pdf/tradedescription2011_en.pdf) h-2. Trade Descriptions (Optical Disc Label) Order 2010 (https://www.jetro.go.jp/world/asia/my/ip/pdf/tradedescriptions_opticaldisclabel_order_2010_ en.pdf) i. Protection under Common Law Passing-off of unregistered trademarks and , and theft of trade secrets, can be prohibited under the Common Law.

3. Character of the four primary IP laws44

Patent Act Year of establishment / 1983/2006 Year of latest amendment (= current law)

44 The content source of this section is mainly English translations of respective laws. In addition, due to space constraints, the contents are a summary of these translations. Therefore, please refer to the original laws and consult an Malaysian lawyer for a certainty sake if you have a legal problem.

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Definition of an Invention An invention means an idea of an inventor which permits in practice the solution to a specific problem in the field of technology. An invention may be or may relate to a product or process. (Article 12) Requirements for Patent: novelty, an inventive step, and industrially applicable. patentability (Article 11) Utility innovation: (i) novelty or new improvement of a known product or process, and (ii) potential for industrial application. (Article 17) Grounds of The following shall not be patentable: unregistrability (a) discoveries, scientific theories, and mathematical methods; (b) plant or animal varieties or essentially biological processes for the production of plants or animals, other than man-made living micro- organisms, micro-biological processes, and the products of such micro- organism processes; (c) schemes, rules, or methods for doing business, performing purely mental acts, or playing games; (d) methods for the treatment of human or animal bodies by surgery or therapy, and diagnostic methods practiced on the human or animal body. (Article 13(1)) Term of protection Patent: 20 years from the filing date (no extensions) (Article 35(1)) Utility innovation: 10 years from the filing date. Renewable two (2) times, each for a term of five (5) years. (Article 35 modified in the Second Schedule under Article 17A) Patent owners’ rights The owner of a patent shall have the following exclusive rights in relation to the patent: (a) to exploit the patented invention; (b) to assign or transmit the patent; (c) to conclude license contracts. (Article 36(1))

“Exploitation” of a patented invention means any of the following acts in relation to a patent: (a) when the patent has been granted in respect of a product: (i) making, importing, offering for sale, selling, or using the product; (ii) stocking such product for the purpose of offering for sale, selling, or using; (b) when the patent has been granted in respect of a process: (i) using the process;

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(ii) doing any of the acts referred to in paragraph (a), in respect of a product obtained directly by means of the process. (Article 36(3)) Acts of infringement Conducting the acts listed in the previous item without the patent owner’s consent in Malaysia shall be an infringement upon the rights of the patent owner. (Article 36(2)) Limitations Purpose of research (Article 37), prior use (Article 38), etc. Parallel importation is permitted. (Article 58A) Remedies against acts of Civil remedies: infringement Payment of damages, injunctions, etc. (Article 60)

Criminal remedies: No criminal punishment against .

Administrative remedies: No specific administrative remedies, including border control by customs. Notes There are provisions regarding compulsory licensing. (Article 49)

Trademark Act Year of establishment / 1976/2002 Year of latest amendment (= current law) Definition of a trademark “Trade mark” means a mark, used or proposed to be used in relation to goods or services, for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods or services and a person having the right, either as proprietor or as registered user, to use the mark, whether with or without an indication of the identity of that person. (Article 3) Requirements for In order for a trade mark (other than a certification trade mark) to be registration registrable, it shall contain or consist of at least one of the following particulars: (a) the name of an individual, company, or firm represented in a special or particular manner; (b) the signature of the applicant for registration or of some predecessor in his business; (c) an invented word or words;

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(d) a word having no direct reference to the character or quality of the goods or services not being, according to its ordinary meaning, a geographical name or surname; or (e) any other distinctive mark. (Article 10(1)) Grounds of If the use of such mark is likely to deceive or cause confusion to the unregistrability public or would be contrary to law, if it contains or comprises any scandalous or offensive matter, or would otherwise not be entitled to protection by any court of law, etc. (Article 14) Marks which contain or consist of the word or words “Patent,” “Patented,” “By Royal Letters Patent,” “Registered,” “Registered Design,” and “Copyright,” etc. (Article 15) Marks that are identical to a trade mark belonging to a different proprietor, and entered in the Register in respect of the same goods or description of goods, or in respect of services that are closely related to those goods, etc. (Article 19) Term of protection 10 years from the filing date. (Article 32) Renewable for an unlimited number of terms, each 10 years. (Articles 41) Trademark owners’ rights The registration of a person as the registered proprietor of a trade mark in respect of any goods or services shall, if valid, give or be deemed to have given to that person the exclusive right to the use of the trade mark in relation to those goods or services. (Article 35(1)) Acts of infringement A registered trade mark is infringed upon by a person who, not being the registered proprietor of the trade mark or a registered user of the trade mark using by way of permitted use, uses a mark which is identical with it or so nearly resembling it as is likely to deceive or cause confusion in the course of trade in relation to goods or services in respect of which the trade mark is registered, in such a manner as to render the use of the mark likely to be taken as being use as a trade mark, etc. (Article 38(1)) Limitations Parallel importation is permitted under the case law, although there is no specific statute law.45 Remedies against acts of Civil remedies: infringement Payment of damages, injunctions, etc.

45 page 21 of the “Anti-copying and imitation manual (Malaysia) (version 2013)” (http://www.jpo.go.jp/torikumi/mohouhin/mohouhin2/manual/pdf/malaysia1.pdf) (written in Japanese)

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Criminal remedies: The Trademark Act does not provide for criminal punishment for trademark infringement. However, the Trade Descriptions Act 2011 does. (See Articles 6 and 8 thereof).

Administrative remedies: Border control by customs, etc. Notes A trademark can be cancelled if not used for three (3) years. (Article 46)

Industrial Designs Act Year of establishment / 1996/2013 Year of latest amendment (= current law) Definition of a design An “Industrial design” means the features of shape, configuration, pattern, or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged by the eye. (Article 3(1)) Requirements for Novelty (Article 12(1)) patentability Grounds of Contrary to public order or morality. (Article 13) unregistrability Term of protection Five (5) years from the filing date. Renewable for four (4) times, each five (5) years. (Article 25) owners’ The owner of a registered industrial design shall have the exclusive rights right to make or import for sale or hire, or for use for the purposes of any trade or business, or to sell, hire or to offer or expose for sale or hire, any article to which the registered industrial design has been applied. (Article 32(1)) Acts of infringement A person infringes upon the rights conferred by the registration of an industrial design if he or she, without the license or consent of the owner of the industrial design, does any of the following things while the registration is still in force: (a) applies the industrial design or any fraudulent or obvious imitation of it to any article in respect of which the industrial design is registered;

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(b) imports into Malaysia for sale, or for use for the purposes of any trade or business, any article to which the industrial design or any fraudulent or obvious imitation of it has been applied outside Malaysia without the license or consent of the owner; or (c) sells, or offers or keeps for sale, or hires, or offers or keeps for hire, any of the articles described in paragraphs (a) and (b). (Article 32(2)) Remedies against acts of Civil remedies: infringement Payment of damages, injunctions, etc. (Articles 33, 35)

Criminal remedies: No criminal punishment for industrial .

Administrative remedies: No specific administrative remedies, including border control by customs.

Copyright Act Year of establishment / 1987/2012 Year of latest amendment (= current law) Definition of a “Copyright” means a copyright under this Act. (Article 3) (See copyrighted work Articles 4, 6, 7, 9, 10, etc.) Registration (or A registration is not necessary to be protected; however, registrations Notification) of copyright became recently possible under the Copyright (Voluntary Notification) Regulations 2012. To register a copyright, a rights holder should submit an application form to MyIPO as per the instructions. You may see such instructions, sample forms, and flow charts, written in English on the website of MyIPO.46 Term of protection Copyright in any literary, musical, or artistic work which subsists in such work under this Act shall subsist during the life of the author, and shall continue to subsist until the expiry of a period of 50 years after his death. (Article 17(1)) Copyright which subsists in a published edition under this Act shall continue to subsist until the expiry of a period of 50 years, computed

46 http://www.myipo.gov.my/-/pemberitahuan-sukarela-hak-cipta

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from the beginning of the calendar year next following the year in which the edition was first published. (Article 18) With respect to sound recording and broadcast, see Articles 19 and 20. Copyright owners’ rights Copyright in a literary, musical or artistic work, a film, or a sound recording or a derivative work shall be the exclusive right to control in Malaysia— (a) the reproduction in any material form; (aa) the communication to the public; (b) the performance, showing or playing to the public; (e) the distribution of copies to the public by sale or other transfer of ownership; and (f) the commercial rental to the public. (Article 13(1)) Acts of infringement Any person who during the subsistence of copyright in a work or performers’ right— (a) makes for sale or hire any infringing copy; (b) sells, lets for hire or by way of trade, exposes or offers for sale or hire any infringing copy; (c) distributes infringing copies; and so on shall, unless he is able to prove that he had acted in good faith and had no reasonable grounds for supposing that a copyright or performers’ right would or might thereby be infringed, be guilty of an offense and shall upon conviction be liable. (Article 41(1)) Limitations including for purposes of research, private study, criticism, parody, etc. (Article 13(2)) Parallel importations are permitted. (Article 36(2)) Remedies against acts of Civil remedies: infringement Payment of damages, injunctions, etc. (Article 37)

Criminal remedies: A fine of up to 50,000 ringgit or imprisonment for up to five (5) years, or both, unless otherwise provided for. (Article 43) In the case of making for sale or hire any infringing copy, the punishment shall be a fine of up to twenty thousand ringgit for each infringing copy or imprisonment for up to five (5) years, or both. (Article 41(1)(a))

Administrative remedies:

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Border control by customs, clamping down by the MDTCC, etc. Notes Moral rights of authors are protected. (Article 25) Moral rights of performers are protected. (Article 25A)

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Attachment3（I Malaysia） Table 1: Breakdown of Position, IPD

Section/Unit Number of Position Filled Director 3 Chief Assistant Director Patents Formality Sub-unit 14 Patent Examination Sub-unit () 12 Patent Examination Sub-unit (Applied Science) 9 Trade Marks Formality Sub-unit 17 Search and Examination Sub-unit 27 Submission Sub-unit 7 Opposition Sub-unit 3 Advertising Sub-unit 4 Certification Sub-unit 4 Certification Renewal Sub-unit 3 Ownership Sub-unit 5 Industrial Design 13 Copyright and Layout Designs of Integrated Circuits 4 Administration and Financial Service 15 Sabah Office 6 Sarawak Office 7 Total 153

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Table 2: Breakdown of Position, PHIM 2003- as of 1st July 2003

Division Number of Position Filled Director General Deputy Director General (Corporate & Industrial Property) Legal Advisory Unit/Secretary of Corporation 9 Public Relation Internal Audit Patents Formality Section 21 Patent Examination Section (Engineering) 24 Patent Examination Section (Applied Science) 18 Trade Marks Formality Section 45 Search and Examination Section 19 Submission Section 17 Opposition Section 8 Industrial Design 12 Copyright and Layout Designs of Integrated Circuits 4 Planning and Corporate Service 4 Administration Service Financial Section 12 Administration and Human Resource Section 29 Information Technology Common Software, Search System and Database Section 4 Multimedia and Publication Section Online Application, Imaging and Filing System Section 2 Operation Technical Assistant and Helpdesk Section 10

7 PHIM Sabah Branch 6 PHIM Sarawak Branch 9 Total 260

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II. Outline of enforcement regarding intellectual property rights

1. Character of Enforcement in Malaysia

First, as stated in Chapter I, administrative enforcement and criminal enforcement are possible only with respect to infringement of trademarks and copyrights (not patent and industrial infringement). Second, in Malaysia, administrative enforcement and criminal enforcement are deeply related. Therefore, administrative enforcement and criminal enforcement are described together, below.

2. Administrative and Criminal Enforcement

(1) The Ministry of Domestic Trade, Cooperative and Consumerism (the “MDTCC”) (http://www.kpdnkk.gov.my/en/home;jsessionid=A40B38D3E87AC1EB002CA958C872A99 7) a. Organization With respect to the organization of the MDTCC, please see pages 14-15 of the Annual Report 2011 of the MDTCC.47 Among the organizations of the MDTCC, the Enforcement Division is in charge of enforcement. The Intellectual Property Corporation of Malaysia (MyIPO)48 (see Chapter I) is an agency under the MDTCC. With respect to the organizational chart of MyIPO, please see this website.49 b. Purpose and Function  The purpose for the establishment of the MDTCC is to promote the growth of ethical domestic trade, and protection of the consumer’s interest.  The MDTCC formulates policies and strategies, and reviews matters related to the development of domestic trade and consumerism.50  Protection of IPRs is one of the most important roles of the MDTCC. On the official website of the MDTCC, there is the phrase, “Strong legal infrastructure and effective administrative regime regarding intellectual property,” stated as one of its seven strategic thrusts.51

47 http://www.kpdnkk.gov.my/kpdnkk-theme/images/kpdnkk/laporan_tahunan_2011.pdf 48 http://www.myipo.gov.my/home 49 http://www.myipo.gov.my/carta-organisasi 50 http://www.kpdnkk.gov.my/en/kpdnkk/profil/latarbelakang 51 http://www.kpdnkk.gov.my/en/7-teras-strategik-kpdnkk

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c. Laws under the jurisdiction of the MDTCC The MDTCC investigates infringement of trademarks under the Trade Descriptions Act (the “TDA”) 2011, copyrighted works under the Copyright Act 1987, and optical disks under the Optical Discs Act (the “ODA”) and Trade Description (Optical Disc Label) Order 2010.52 53 d. Roles and authorities

(a) Raids

 The TDA provides for the authority of the Controllers of Trade Descriptions, etc.54, who are public officers of the MDTCC, with powers such as the power of investigation, the power of arrest (without a warrant), search and seizure55, etc.  The Copyright Act provides for the authority of the Controllers of Copyright, etc.56, who are public officers of the MDTCC, such as the power to search for and seize infringing copies57, the power of investigation58, the power of arrest (without a warrant)59, and so on.  The ODA provides for the authority of the Controllers of Optical Discs, etc.,60 who are public officers of the MDTCC, such as the power of investigation61, and additional powers, including the power to enter and inspect any licensed premises, requiring the production of records, books, accounts, etc.62

(b) Prosecution The Enforcement Division of the MDTCC has the authority to prosecute offenders who have allegedly committed the offenses provided in the acts listed in item (a) above, with the written consent of the Public Prosecutor.63

52 http://www.kpdnkk.gov.my/en/peniaga/akta/akt-kpdnkk 53 Page 1 of the “Anti-copying and imitation manual (Malaysia) (version 2013)” (http://www.jpo.go.jp/torikumi/mohouhin/mohouhin2/manual/pdf/malaysia1.pdf) (written in Japanese) 54 Articles 2 and 3 of the TDA. 55 Chapter 3 of the TDA.

56 Articles 3 and 5 of the Copyright Act. 57 Articles 39(6), 44, etc. of the Copyright Act. 58 Article 50 of the Copyright Act. 59 Article 50A of the Copyright Act. 60 Articles 2 and 3 of the ODA. 61 Article 36 of the ODA. 62 Article 36 of the ODA. 63 Article 62 of the TDA, Article 53 of the Copyright Act, and Article 53 of the ODA.

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e. Statistics

The number of cases and the amount of seized value of counterfeits is as follows:64

Year Total Number of Cases Seized Value (RM) 2004 3,914 78,166,687.27 2005 2,606 12,212,808.55 2006 2,018 42,686,237.69 2007 1,936 56,169,682.09 2008 1,528 23,463,304.88 2009 N/A N/A 2010 1,328 13,783,735.83 2011 1,057 11,035,244.99 2012 (July) 604 11,288,687 Total 14,091 248,806,388.30

The number of cases and the amount of seized value of copyright infringing goods is as follows:65

Year Total Number of Cases Seized Value (RM) 2004 4,390 59,216,528.00 2005 3,812 100,370,598.00 2006 3,792 120,001,103.00 2007 2,720 54,907,108.49 2008 1,942 20,680,942.20 Total 16,656 355,176,280

The number of seized optical discs is as follows:66

Year Seized Optical Discs 2010 2,495,325 2011 1,682,281

64 Page 50 of the “Anti-copying and imitation manual (Malaysia) (version 2013).” 65 Page 50 of the “Anti-copying and imitation manual (Malaysia) (version 2013).” 66 Page 51 of the “Anti-copying and imitation manual (Malaysia) (version 2013)”

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2012 824,688 Total 5,002,294

Please also see the graphs on pages 95-97 of the Annual Report 2011 of the MDTCC. f. Other information

 Basket of Brands (BOB) In 2011, in order to enhance and strengthen the enforcement actions under the TDA 2011, the MDTCC set up a separate database, titled “BOB,” to allow trademark owners to register themselves with the MDTCC, in order to gain priority in the initiation of enforcement actions and the prosecution of trademark infringement cases.67

(2) Royal Malaysian Police

Under the Copyright Act and the ODA, police officers not below the rank of Inspector have similar authorities to the Controllers regarding raids. Please see the respective acts.

(3) Courts

 It is the courts which finally decide whether an accused person should bear any punishment. The Federal Court is the highest court in Malaysia.

 Apart from imposing punishments in criminal trials, the High Courts have an important role in the process of investigations, in the case of trademark infringement. Article 9(1) of the TDA provides that, where any person, being a registered owner of a registered trademark, claims that his or her rights in respect of such trademark are being infringed upon in the course of trade, by any other mark or get-up used by any other person, which is not identical to his or her registered trademark but can be passed off as his registered trademark, he or she may apply to the High Court to declare that the infringing mark is a false trade description, for the purpose of Section 8. Such an order is called a “trade description order” (Article 9(3)). If marks on counterfeit goods are identical to the rights holder’s marks, the rights holder can file an application requesting an investigation by the MDTCC, without obtaining such an order. However, if that is not the case, he or she first needs to obtain such an order.

67 With respect to the details of BOB, see pages 95 and 109 of Annual Report 2011 of the MDTCC.

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(4) Royal Malaysian Customs Department (hereinafter referred to as “Customs”) (http://www.customs.gov.my/index.php/en) a. Organization With respect to the organization of Customs, please see Attachment 1. The Enforcement Division is in charge of enforcement.68 b. Roles and authorities  The Copyright Act provides for the authority of officers of Customs, such as the power to search for and seize infringing copies.69  The Trademark Act provides for the authority of officers of Customs, such as to prohibit import of infringing goods, and to seize them.70

2. Civil Enforcement (Civil)

(1) Levels of courts

There are five (5) levels of Malaysian courts -- Magistrates Courts, Sessions Courts, High Courts, the Court of Appeal, and the Federal Court, from the lowest level to the highest level.

Because Magistrates Courts and Sessions Courts do not have the authority to issue injunctions, civil litigation regarding IPRs infringement usually commences from the High Courts.71

(2) Remedies

A rights holder of patents, trademarks, industrial designs, or copyrights who alleges an infringement upon his or her rights can file a litigation demanding injunctions and / or damages. With respect to the basis articles of the respective laws, please see Chapter I.

(3) Anton Piller order

68 http://www.customs.gov.my/index.php/en/about-us/organization-structure/enforcement-division/division-functions 69 Articles 39(6), etc. of the Copyright Act. 70 Article 70D(8), etc. of the Trademark Act. 71 Page 58 of the “Anti-copying and imitation manual (Malaysia) (version 2013).”

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In brief, an Anton Piller injunction is a mandatory order permitting the applicant to enter the specified premises, and inspect and take into custody documents or articles relevant to an action, which might otherwise be destroyed or concealed by the defendant. Its purpose is therefore to preserve material documentary evidence essential to the applicant’s case.72 An Anton Piller order is often applied in cases of IP infringement civil cases.73

72 https://www.aippi.org/download/commitees/185/QS185malaysia.pdf 73 Page 69 of the “Anti-copying and imitation manual (Malaysia) (version 2013).”

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Attachment1 (II Malaysia)

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III. Registration flow regarding the primary four IP rights

1. Flowchart procedures

With respect to the application and registration flowchart procedures regarding patents, trademarks, and industrial designs, please see Attachment 1.74 For the flowchart procedures regarding the notification of copyrights, please see Attachment 2.75

2. Application and registration outline

Patents Language The application, and any associated statements or documents, shall be filed in the National language, or in English. (Article 18(11) of the Patent Regulations76) Fees An applicant is required to pay RM 290.00 when making an application. Within 18 months from the filing date, the applicant is required to pay RM 1100.00 to request a substantive examination of the application. In the case of E-filings (filings through the online filing system), the fees are slightly lower. There are various other fees. Please see this page of MyIPO’s website.77 Where to apply An applicant must file a patent application with the Intellectual Property Corporation of Malaysia (MyIPO), in Kuala Lumpur or at one of the branch offices located in Sabah and Sarawak. Applications, correspondence, and enquiries should be directed to the following address: The Registrar The Patent Registration Office Intellectual Property Corporation of Malaysia (MyIPO) Unit 1-7, Ground Floor, Menara UOA Bangsar

74 http://www.myipo.gov.my/paten-carta http://www.myipo.gov.my/web/guest/cap-carta http://www.myipo.gov.my/web/guest/reka-carta 75 http://www.myipo.gov.my/documents/10180/c824e232-84f4-465e-bcdb-49846a692f46 76 http://www.myipo.gov.my/documents/10180/15858/Patent%20Regulations%201986-.pdf 77 http://www.myipo.gov.my/web/guest/form-related-fees

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No. 5 Jalan Bangsar Utama 1 59000 Kuala Lumpur78 An applicant may file a patent application through the online filing system on MyIPO’s website.79 Examination Not only formal examinations, but also substantive examinations are conducted. The Patent Registration Office of MyIPO is the agency in charge of examinations. MyIPO may appoint any person, government department, unit or organization, or any foreign or international patent office or organization to be an Examiner for the purposes of this Act. (Article 9A of the Patent Act80) Notice An applicant must give notice to the Patent Registration Office of an address for service in Malaysia, which may be treated for all purposes concerning or connected with the proceedings as the address of the person concerned. Where a patent agent has been appointed, the address for service shall be the address of the patent agent. (Article 51 of the Patent Regulations) Publication of patent The Registrar shall make available for public inspection after eighteen applications months from the priority date or filing date of a patent application and upon payment of the prescribed fee -(a) the name, address and description of the applicant and the name and address of his agent, if any; (b) the application number; (omitted) (Article 34(1) of the Patent Act) Publication A granted patent is recorded in the Register of Patents. (Article 31(2)(b) of the Patent Act). Any person may examine the Register, and may obtain certified extracts therefrom upon payment of the prescribed fee. (Article 33 of the Patent Act)

Trademarks

78 http://www.myipo.gov.my/web/guest/paten-maklumat-umum 79 http://www.myipo.gov.my/web/guest/paten-carian 80 http://www.myipo.gov.my/documents/10180/15858/Patents.pdf

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Language The application and any associated statements or documents shall be filed in the National language, or in English.81 Where a trademark contains a word or words in a language other than the national language or the English language, the form of application shall be endorsed with an exact translation of the word or words and the name of the language. (Article 23(3) of the Trademarks Regulations82) Fees An applicant is required to pay RM 370.00 when making an application.83 In the case of E-filings, the fees are slightly lower. Where to apply Any document or item required or authorized by the Trademark Act or these Regulations to be filed, shall be delivered by hand to the Trademark Registration Office during its normal business hours, or sent to the Registrar by post. (Article 8 of the Trademarks Regulations) An applicant may file a trademark application through the online filing system on MyIPO’s website.84 Examination Not only formal examinations, but also substantive examinations are conducted. The Trademark Registration Office of MyIPO is the agency in charge of examinations. Notice An applicant who does not reside or carry on business in Malaysia shall file Form TM1, giving an address for service in Malaysia, and such address may be treated as the actual address of the person for all purposes connected with the matter in question. Form TM 1 may be signed by an authorized agent, and in any case in which the Registrar so requires shall be signed by the applicant, as the case may be. (Articles 10(1) and (3) of the Trademarks Regulations) Publication of There is no publication system for trademark applications. However, trademark applications after finishing substantial examinations, contents of applications are advertised for opposition to the registration by third parties. (Article 27 of the Trademark Act85)

81 http://www.myipo.gov.my/web/guest/paten-keperluan 82 http://www.myipo.gov.my/documents/10180/22873/Trade%20Marks%20Regulations%201997%28incorpora ted%29.pdf 83 http://www.myipo.gov.my/web/guest/peraturan-cap-dagangan-1997-pindaan-2011 84 http://www.myipo.gov.my/web/guest/cap-carian 85 http://www.jpo.go.jp/shiryou_e/s_sonota_e/fips_e/pdf/malaysia/trademark_act.pdf

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Publication of A granted trademark is recorded in the Register of Trademarks. (Article registered trademarks 6 of the Trademark Act) The Register shall be open to inspection by the public, at such times, and in accordance with such conditions, as may be prescribed. (Article 8 of the Trademark Act)

Industrial Designs Language A completed application form (ID Form 1) in Malay or English.86 Fees An applicant is required to pay RM 500.00 when making an application.87 In the case of E-filings, fees are slightly lower. Where to apply Any document or item required or authorized by the Act or these Regulations to be filed at the Industrial Designs Registration Office or any of its branch offices, or with the Registrar, shall be delivered by hand to the Office during its normal business hours, or be sent to the Registrar by post. (Article 42(1) of the Industrial Designs Regulations88) Examination There are only formal examinations. There are no substantial examinations. Notice Any person concerned with any proceedings under the Industrial Designs Act, or any regulations made under it, shall furnish to the Registrar an address for service in Malaysia, which may be treated for all purposes concerning or relating to such proceedings as the actual address of the person concerned. Where an agent has been appointed, the address for service shall be the address of the agent. (Article 40(1)(2) of the Industrial Designs Regulations) Publication of industrial There is no publication system of industrial designs applications. design applications A granted industrial design is recorded in the Register of Industrial Publication of registered Designs. (Article 6 of the Industrial Designs Act89) industrial designs The Register shall be open to the inspection of the public, at such times, and in accordance with such conditions, as may be prescribed. (Article 8 of the Industrial Designs Act)

86 http://www.myipo.gov.my/web/guest/reka-umum 87 http://www.myipo.gov.my/web/guest/industrial-design 88 http://www.myipo.gov.my/documents/10192/83926/Industrial%20Designs%20Regulations%201999-230213.pdf 89 http://www.myipo.gov.my/documents/10192/396014/Act%20ID1996%28Act%20552%29%20- online%20version%20updated%20Jan%202013.pdf

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Copyrights Language Where the title of a work contains a word in a language other than the national language or the English language, the notification of copyright shall, apart from the forms required to be submitted, also include a translation of the word into the national language or the English language, and a transliteration of the word, as well as the name of that language. (Article 5(4) of the Copyright (Voluntary Notification) Regulations90) Fees An applicant is required to pay RM 15.00 for notification of copyright.91 Where to apply Any document or work required to be submitted by these Regulations, shall be addressed to the Controller, and delivered by hand to the Copyright Office, during its normal business hours, or shall be sent by post or electronic means to the Controller. (Article 7 of the Copyright (Voluntary Notification) Regulations) Examination There are only formal examinations. There are no substantial examinations. Notice If the notification of copyright is in order, the Controller shall issue a letter to the Applicant stating that the notification of copyright has been entered into the Register. (Article 8(1) of the Copyright (Voluntary Notification) Regulations) Note: Every notification of copyright shall be made by a citizen or a permanent resident of Malaysia. Non-citizens or permanent residents of Malaysia shall appoint a representative who is a citizen or a permanent resident of Malaysia.92 Publication If the notification of copyright is in order, the notification of copyright is entered into the Register. Any person may make a request to the Controller, in Form CR-8, together with the prescribed fee, to examine the Register. (Article 11(1) of the Copyright (Voluntary Notification) Regulations)

90 http://www.myipo.gov.my/documents/10180/6d235c10-3404-4840-9d24-2385db93dcac 91 http://www.myipo.gov.my/documents/10180/650f8150-ba51-4740-ab4a-b6d0b3bcbb79 92 http://www.myipo.gov.my/documents/10180/41614/Procedure%20for%20Voluntary%20Notification.pdf

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Attachiment1 (III Malaysia)

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Attachment 2 (III Malaysia)

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■ Thailand

I. Outline of Intellectual Property Systems

1. Process of establishing the government office which administers intellectual property in Thailand

(1) Process of establishment

The Department of Intellectual Property (hereinafter referred to as “DIP) has explained on its website as follows93:

The DIP was formally established in 1992. The Department of the Ministry of Education was transferred to this new Department of Intellectual Property under Ministry of Commerce.

(2) Dimensions of DIP at the initial stage

The DIP has explained on its website as follows94: a. Organizations Upon its inauguration, the DIP was organized into six Divisions, namely, Office of the Secretary (with divisional status), Services and Publicity Division, Examination 1 Division (Patent Examination), Examination 2 Division (Trademark Examination), Registration and Certificates Division and Technical and Planning Division.

In 1999, the DIP’s three Divisions were elevated into a higher status of “Office” so as to become the Trademark Office, Copyright Office, and Patent Office in addition to its existing bodies with the “Division” status, namely, the Office of the Secretary, Legal Affairs and Appeals Division and Intellectual Property Promotion and Development Division. In addition, also established were the Department’s internal bodies, (and ascribed the status equivalent to a Division) the Centre for Co- ordination on Intellectual Property Infringement Prevention and Suppression and Office of Intellectual Property Dispute Resolution and Prevention.

93 http://www.ipthailand.go.th/ipthailand/index.php?option=com_content&task=category§ionid=17&id=10 4&Itemid=183 94 Refer to the one before.

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In 2010, four Divisions were elevated to the “Office” status so as to become the Office of the Secretary, Legal Office, Intellectual Property Promotion and Development Office, and Office of Prevention and Suppression of Intellectual Property Infringement, in addition to its existing three Offices, viz, Trademark Office, Copyright Office and Patent Office; hence the total of seven Offices within the Department. In addition, two bodies have been set up as the Department’s internal arms with the status equivalent to a Division – the Intellectual Property Management Office and the Design Office. b. Number of staff At its inception, the DIP consisted of 144 government officials and 33 employees. In 2011, the number of staff reached 405, of which the number of examination officers for patents (including patents for designs) was 42 and the number of examination officers for trademarks was 18).95

2. Summary of current IP laws and primary IP-related authorities

(1) Primary IP-related authorities a. The Department of Intellectual Property (“DIP”), Ministry of Commerce (http://www.ipthailand.go.th/ipthailand/index.php?lang=en) b. Central Intellectual Property and International Trade Court (“CIPITC”) (http://www.ipitc.coj.go.th/index.php?co=en) c. Economic and Cyber Crime Division (“ECD”) of the Royal Thai Office (http://www.ecdpolice.com/index.php) d Technology Crime Suppression Division (“TCSD”) of the Royal Thai Office (http://www.tcsd.in.th/index.php) e. Department of Special Investigation (“DSI”), Ministry of Justice (https://www.dsi.go.th/index.php?lang=en) f. The Customs Department

95 http://www.jpo.go.jp/torikumi/kokusai/kokusai2/pdf/ipcoop_asia-pacific/2011_02.pdf (see page 5) (written in Japanese)

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(http://internet1.customs.go.th/wps/wcm/connect/CustEn/Home/HomeWelCome) g. Thai Arbitration Institute, Ministry of Justice * The official website written in English cannot be found. h. The Office of Intellectual Property Dispute Prevention and Resolution of DIP (http://www.ipthailand.go.th/ipthailand/index.php?option=com_content&task=view&id=341& Itemid=273&lang=en)

(2) Primary IP laws currently provided in Thailand96 a-1. Patent Act (established in 1979, finally amended in 1999) (http://www.wipo.int/wipolex/en/text.jsp?file_id=129773) (the version as of 1999) a-2. Ministerial Regulations (No. 10) B.E. 2529 (1986) (http://www.wipo.int/wipolex/en/text.jsp?file_id=129775) (the version amended by the Ministerial Regulations (No. 28) B.E. 2542 (1999)) a-3. Ministerial Regulations (No. 21) B.E. 2542 (1999) (http://www.wipo.int/wipolex/en/text.jsp?file_id=129777) a-4. Ministerial Regulations (No. 22) B.E. 2542 (1999) (http://www.wipo.int/wipolex/en/text.jsp?file_id=185214) a-5. Ministerial Regulations (No. 23) B.E. 2542 (1999) * The English version cannot be found. a-6. Ministerial Regulations (No. 24) B.E. 2542 (1999) (http://www.wipo.int/wipolex/en/text.jsp?file_id=185216) a-7. Ministerial Regulations (No. 25) B.E. 2542 (1999) (http://www.wipo.int/wipolex/en/text.jsp?file_id=185197) a-8. Ministerial Regulations (No. 26) B.E. 2542 (1999) (http://www.wipo.int/wipolex/en/text.jsp?file_id=185239) a-9. Ministerial Regulations (No. 27) B.E. 2542 (1999) (http://www.wipo.int/wipolex/en/text.jsp?file_id=129779) a-10. Ministerial Regulation on the Application for Patent Protection to Implement the Patent Treaty Cooperation B.E. 2552 (2009) (http://www.wipo.int/wipolex/en/details.jsp?id=6111) * The English translation cannot be found. However, some information is provided on the website above.

96 http://www.wipo.int/wipolex/en/profile.jsp?code=TH

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b-1. Trademark Act (established in 1991, finally amended in 2000) (https://www.jpo.go.jp/shiryou_e/s_sonota_e/fips_e/pdf/thailand/marks_act.pdf) (the version of 2000) b-2. Ministerial Regulation B.E. 2535 (1992) (http://www.wipo.int/wipolex/en/details.jsp?id=3805) * The English translation cannot be found. However, some information is provided on the website above. b-3. Ministerial Regulations No. 3, B.E. 2540 (1997) (http://www.wipo.int/wipolex/en/details.jsp?id=3806) * The English translation cannot be found. However, some information is provided on the website above. c-1. Copyright Act (established in 1994) (http://www.wipo.int/wipolex/en/text.jsp?file_id=129763) c-2. Ministerial Regulation (B.E. 2540) (1997) (http://www.wipo.int/wipolex/en/text.jsp?file_id=129767) d. Trade Secrets Act (established in 2002) (http://www.wipo.int/wipolex/en/text.jsp?file_id=129785) e. Protection of Layout—Designs of Integrated Circuits Act (established in 2000) (http://www.wipo.int/wipolex/en/text.jsp?file_id=129783) f. Manufacture of Optical Discs Act (established in 2005) (http://www.wipo.int/wipolex/en/text.jsp?file_id=215706) g-1. Act on Protection of Geographical Indication (established in 2003) (http://www.wipo.int/wipolex/en/text.jsp?file_id=185549) g-2. Ministerial Regulation of Geographical Indication B.E. 2547 (2003) (http://www.wipo.int/wipolex/en/text.jsp?file_id=215729) h. Plant Varieties Protection Act (established in 1999) (http://www.wipo.int/wipolex/en/text.jsp?file_id=129781) i. Protection and Promotion of Traditional Thai Medicinal Intelligence Act (established in 1999) (http://www.wipo.int/wipolex/en/text.jsp?file_id=179713)

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3. Character of the four primary IP laws97

Patent Act Year of establishment / 1979/1999 Year of latest amendment (= current law) Definition of an Invention “Invention” means any innovation or invention which creates a new product or process, or any improvement of a known product or process. (Article 3) Requirements for Patent: novelty, an inventive step, and capable of industrial application. patentability (Article 5) Petty patent: novelty and capable of industrial application. (Article 65bis) Grounds of The following inventions are not protected under this Act: unregistrability (1) naturally occurring microorganisms and their components, animals, plants or extracts from animals or plants; (2) scientific or mathematical rules or theories; (3) computer programs; (4) methods of diagnosis, treatment or cure of human and animal diseases; (5) inventions contrary to public order, morality, health or welfare. (Article 9) Term of protection Patent: 20 years from the filing date (no extension) (Article 35) Petty patent: six (6) years from the filing date. Renewable for two (2) terms, each of two (2) years. (Article 65 septies) Patent owners’ rights No other person except the patentee shall have the following rights: (1) where the subject matter of a patent is a product, the right to produce, use, sell, have it in possession for sale, offer it for sale or import the patented product; (2) where the subject matter of a patent is a process, the right to use the patented process, to produce, use, sell, have it in possession for sale, offer it for sale or import the product produced by the patented process. (Article 36)

97 The content source of this section is mainly English translations of respective laws. In addition, due to space constraints, the contents are a summary of these translations. Therefore, please refer to the original laws and consult an Thai lawyer for a certainty sake if you have a legal problem.

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Acts of infringement Conducting the acts listed in the previous item without the patent owner’s consent in Thailand shall be an infringement of the rights of the patent owner. (See Article 77bis, etc.) Limitations Purpose of research, prior use, etc. (Article 36) Remedies against acts of Civil remedies: infringement Payment of damages, injunctions, etc. (Article 77bis, Article 77ter)

Criminal remedies: Imposing a fine of up to 400,000 baht or imprisonment up to two (2) years or both. (Article 85)

Administrative remedies: Border control by customs, etc. Notes There are provisions regarding compulsory licensing. (Articles 46, 47, 47bis, 51, 52) The license contract shall be in writing and registered. (Article 41)

Trademark Act Year of establishment / 1991/2000 Year of latest amendment (= current law) Definition of a trademark “Trademark” means a mark used or proposed to be used on or in connection with goods to distinguish the goods with the trademark of the owner from goods under another person’s trademark. “Service mark” means a mark used or proposed to be used on or in connection with services to distinguish the services using the service mark of the owner from services under another person’s service mark. (Article 4) Requirements for (i) distinctiveness, (ii) not prohibited under the Trademark Act, and (iii) registration not the same as or similar to a trademark registered by another person. (Article 6) Grounds of State arms or crests, royal seals, official seals, Chakkri emblems, unregistrability emblems and insignia of the royal orders and decorations, seals of office, seals of ministries, bureaus, departments or provinces, etc. (Article 8) Term of protection 10 years from the filing date. Renewable for unlimited number of terms, each 10 years. (Articles 53-55)

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Trademark owners’ rights Subject to Sections 27 and 68, a person who is registered as the owner of a trademark shall have the exclusive right to use it for the goods for which it is registered. (Article 44) Acts of infringement Counterfeiting or imitating a trademark registered in Thailand by another person, importing or distributing goods bearing a counterfeit trademark, etc., shall be an infringement of the rights of the trademark owner. (See Articles 44, 108-110) Limitations There is no provision which clearly refers to parallel importations. However, the Supreme Court allowed parallel importations, applying the exhaustion doctrine98. Remedies against acts of Civil remedies: infringement Payment of damages, injunctions, etc. (Article 46)

Criminal remedies: Imposing a fine of up to 400,000 baht or imprisonment up to four (4) years, or both. (Article 108)

Administrative remedies: Border control by customs, etc. Notes A trademark can be cancelled if not used for three (3) years. (Article 63) The license contract shall be in writing and registered. (Article 68)

Laws regarding patents for designs Year of establishment / Same as the Patent Act. Patents for designs are protected under Year of latest amendment Articles 56-65 of Patent Act. (= current law) Definition of a design “Design” means any form or composition of lines or colors which gives a special appearance to a product and can serve as a pattern for a product of an industry or handicraft. (Article 3) Requirements for A new design for an industry, including handicrafts. (Article 56) patentability Term of protection 10 years from the filing date (no extension) (Article 62) Design patent owners’ No other person except the patentee shall have the right to use the

98 See pages 398-399 of “Enforcement of IP in Asian countries” (No. 109 of Supplementary volume NBL) (Shōji- hōmu, 2008) (written in Japanese).

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rights patented design in the manufacture of the product or to sell, have in possession for sale, offer for sale or import a product, embodying the patented design, except the use of the design for the purpose of study or research. (Article 63) Acts of infringement Conducting the acts listed in the previous item without the design patent owner’s consent in Thailand shall be an infringement of the rights of the design patent owner. (See Article 77bis, etc.) Remedies against acts of Basically the same as patents. (Article 77bis, Article 77ter, Article infringement 85)

Copyright Act Year of establishment / 1994 Year of latest amendment (= current law) Definition of a A copyright work means a work of authorship in the form of a literary, copyrighted work dramatic, artistic, musical, audiovisual, cinematographic, sound recording, sound and video broadcasting work or any other work in the literary, scientific or artistic field whatever the mode or form of its expression. (Article 6) Registration (or Registration is not necessary to be protected. However, registration Notification) of a copyright is not only possible but also recommended for a rights holder to clarify and protect his rights, especially in the case of enforcing infringement violations. To register a copyright, a rights holder should submit an application form to the DIP or the local finance bureau. On the form, the applicant should provide the name of the copyright owner, the author, the name of the work, type of work, country of creation, year of creation, information regarding copyright licensing / assignment, and so on, attaching the actual work.99 With respect to the past record of registration (the number of registration), see Attachment 1.

99 You may see an English translation of the application form on the following website, the “Handbook of Countermeasures against Copyright Infringements in Thailand” issued by the Agency of Cultural Affairs (the “ACA”) in Japan (see pages 64-75 thereof).

http://www.bunka.go.jp/chosakuken/kaizokuban/pdf/24_tai_singai_handbook_ver2.pdf Please note that such translation was not provided by the government of Thailand but by a law firm that coordinated with the ACA.

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Term of protection A copyright shall basically subsist for the lifetime of the author and for 50 years after his death. (Article 19) A copyright of a photographic work, audiovisual work, cinematographic work, sound recording or audio and video broadcasting work shall subsist for 50 years as from the time of authorship; if the work is published during such period, the copyright shall subsist for 50 years as from the first publication. (Article 21) A copyright of a work of applied art shall subsist for 25 years as from the time of authorship; if the work is published during such period, the copyright shall subsist for 50 years as from the first publication. (Article 22) Copyright owners’ rights The owner of the copyright shall have the exclusive rights of: (1) reproduction or adaptation; (2) communication to the public; (3) rental of the original or the copies of a computer program, an audiovisual work, a cinematographic work and sound recordings; (4) assigning benefits accruing from the copyright to other persons; (5) licensing the rights mentioned in items (1), (2) or (3), with or without conditions, provided that such conditions shall not unfairly restrict competition. (Article 15) Acts of infringement (1) Reproduction or adaptation, (2) communication to the public of a copyrighted work, etc., performed without the consent of the copyright holder shall be deemed to be an infringement of the copyright. Articles 27-31) Limitations Research or teaching purposes, citations, personal use, etc. (Articles 32-43) Remedies against acts of Civil remedies: infringement Payment of damages, injunctions, etc. (Articles 64 and 65)

Criminal remedies: Imposing a fine of up to 200,000 baht. However, the punishment shall be a fine of up to 800,000 baht or a sentence of up to four (4) years of imprisonment or both, in the case of committing infringement by way of trade. In addition, the punishment shall be a fine of 400,000 baht or a sentence of up to two (2) years of imprisonment or

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both, in the case of a copyright infringement under Article 31(2) (indirect infringement by way of trade). (Articles 69 and 70)

Administrative remedies: Border control by customs, etc. Notes Related rights of performers are protected. (Article 44-53) Moral rights of authors are protected. (Article 18) One half of the fine imposed by a judgment shall be paid to the owner of a copyright or a performer’s rights (Article 76)

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Attachment 1 (I Thailand)

Statistics of Copyrights Notification classified by Work100

Year Unit : Number Growth Rate (%) 2008 2009 2010 2011 2012 2009 2010 2011 2012 Literary 2,114 3,621 4,283 4,317 3,323 71.3 18.3 0.8 -23.0 Dance 43 26 23 14 14 -39.5 -11.5 -39.1 0.0 Artistic 5,430 4,968 6,776 4,625 4,811 -8.5 36.4 -31.7 4.0 Musical 13,471 10,653 9,427 6,688 8,447 -20.9 -11.5 -29.1 26.3 Audiovisual 600 790 639 484 376 31.7 -19.1 -24.3 -22.3 Cinematograph 24 31 61 29 31 29.2 96.8 -52.5 6.9 ic Sound 296 290 216 401 159 -2.0 -25.5 85.6 -60.3 Recording Broadcasting 0 2 0 1 0 - -100.0 - -100.0 Others 743 607 411 290 38 -18.3 -32.3 -29.4 -86.9 Total 22,721 20,988 21,836 16,849 17,199 -7.6 4.0 -22.8 2.1

100 See page 98 of the Annual Report 2012 of DIP. (http://www.ipthailand.go.th/ipthailand/images/Anual/DIPAR2012.pdf)

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II. Outline of enforcement regarding intellectual property rights

1. Administrative Enforcement

(1) The Department of Intellectual Property (“DIP”), Ministry of Commerce a. Organization With respect to the organization of the DIP, please see No.1 of Attachment 1 or pages 28-29 of Annual Report 2012 of the DIP.101 b. Role Although the DIP itself does not have the power to investigate like the police, the DIP, in cooperation with the police, other governmental agencies, and rights holders, conducts various activities to prevent and suppress infringement upon intellectual property rights (hereinafter referred to as “IPRs”, and intellectual property as “IP”). For example, in 2012, The DIP held a meeting between business operators and public officials in charge of the prevention and suppression of IP infringement, with a view to curbing the piracy problem in border areas; The DIP, in association with the Royal Thai Police Bureau, the Customs Department, the Ministry of Finance, the Department of Special Investigation, and the Anti-Piracy Committee (from the private sector), organized a ceremony for the destruction of pirated products; The DIP held a workshop on prevention and suppression of IP infringement, for educating police officers; and so on.102

101 http://www.ipthailand.go.th/ipthailand/images/Anual/DIPAR2012.pdf 102 See pages 41, 44, and 47 of Annual Report 2012 of the DIP.

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c. Statistics The number of cases suppressing the violation of IPRs from 2007-2011 is as follows103:

Legislation 2007 2008 2009 under which Cases Seized Cases Seized Cases Seized Infringement (Number) Articles (Number) Articles (Number) Articles Occurred (Roll/Piece) (Roll/Piece) (Roll/Piece) Copyright Act 4,614 2,228,348 3,215 2,465,679 3,781 3,099,592 Trademark Act 2,465 1,472,813 2,697 946,262 3,826 2,168,887 Patents Act 4 10045 1 1 5 46461 Films and 35 34,830 10 4,374 1 3,595 Videos Act Total 7,118 3,746,036 5,923 3,416,316 7,613 5,318,535

2010 2011 Total Cases Seized Articles Cases Seized Articles Cases Seized (Number) (Roll/Piece) (Number) (Roll/Piece) (Number) Articles (Roll/Piece) 2,867 2,288,702 3,147 667,721 17,624 10,750,042 2,679 2,011,295 2,210 1,668,556 13,877 8,267,813 2 513 5 129 17 57,149 25 38,319 34 31,271 105 112,389 5,573 4,338,829 5,396 2,367,677 31,623 19,187,393

103 See page 110 of the Annual Report 2011 of the DIP.

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The number of cases investigating the violation of IPRs in 2012 is as follows104:

Offences Under 2012 Arrests Materials Seized Copyright Act 4,917 3,851,578 Trademark Act 4,788 2,687,925 Patent Act 24 4,859 Other laws (Optical Disc 200 257,662 Production Act, Film and Video Act, Consumer Protection Act Penal Code) The Customs Act 837 367,800 Total 10,766 7,169,824

d. Other information The DIP provides a brief explanation with respect to deterring the infringement of IPRs on the following website: http://www.ipthailand.go.th/ipthailand/index.php?option=com_content&task=section&id=32&Itemi d=229

(2) The Customs Department a. Organization With respect to the organization of the Customs Department (“Customs”), please see Attachment 2. b. Role  Customs seizes goods infringing on IPRs, as per Part III, Section 4 of the TRIPS Agreement.

 The provisions allowing Customs to provide an effective and efficient level of IPRs protection and enforcement at its borders is as follows105 106:

104 See page 101 of the Annual Report 2012 of the DIP. 105 http://internet1.customs.go.th/wps/wcm/connect/custen/traders+and+business/prohibited+and+restricted+item s/ipr+infringing+goods/iprinfringinggoods

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 Export and Import of Goods Act B.E. 2522  Trademark Act B.E. 2534  Copyright Act B.E. 2537  Customs Act B.E. 2469  Customs Notification No. 6/2531: Inspection of Trademarks Suspicious of counterfeiting.  Customs Notification No. 28/2536: Regulatory Practice on IPRs Infringement  Customs Code of Practice B.E. 2544

 You may also see the details of customs and subsidiary laws on the following website: http://internet1.customs.go.th/wps/wcm/connect/custen/legislation/legislation c. Notes To protect a rights holder from the importation/exportation of goods infringing on its IPRs, the rights holder, or in some cases an authorized person, must submit a written request for the suspension of release to Thai Customs. The written request for intervention is an essential document that allows Customs to suspend the release of imported/exported goods that infringe on IPRs.107

106 Although the Patent Act does not clearly provide for border controls by Customs, Customs can seize patent infringing goods as a part of regulating crime generally. However, such instances are very rare. See pages 597- 598 of Chapter 13 of Title 2 “King of Thailand”, Intellectual Property Systems in Asian Countries, written by Masatoshi Ohara (Seirin Shoin, 2010) (written in Japanese).

107 http://internet1.customs.go.th/wps/wcm/connect/custen/traders+and+business/prohibited+and+restricted+item s/ipr+infringing+goods/iprinfringinggoods

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d. Statistics

The number of IPRs infringing goods seized by Customs is as follows108:

Fiscal Year Number of Cases Quantity Value (Baht) 2003 19 251,577 8,465,867 (1 Jan 2002 - 30 Sep 2003) 2004 111 1,394,646 126,346,192 (1 Oct 2003 - 30 Sep 2004) 2005 151 1,935,737 38,846,198 (1 Oct 2004 - 30 Sep 2005) 2006 419 1,830,837 76,051,101 (1 Oct 2005 - 30 Sep 2006) 2007 551 1,596,672 103,903,568 (1 Oct 2006 - 30 Sep 2007) 2008 651 2,222,254 382,678,786 (1 Oct 2007 - 30 Sep 2008) 2009 684 1,051,474 289,448,817 (1 Oct 2008 - 30 Sep 2009) 2010 759 628,803 120,453,899 (1 Oct 2009 - 30 Sep 2010) 2011 621 441,298 132,064,950 (1 Oct 2010 - 30 Sep 2011) 2012 313 184,524 76,414,574 (1 Oct 2011 - 31 May 2012)

2. Judicial Enforcement (Civil)

(1) The Central Intellectual Property and International Trade Court (the “CIPITC”)109 a. Jurisdiction The CIPTIC has the power to adjudicate both civil and criminal cases regarding IPand civil cases regarding international trade.

108 http://www.iprcustoms.com/index.php?lay=show&ac=article&Id=126935 109 http://www.ipitc.coj.go.th/index.php?co=en

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b. Act for the Establishment of CIPTIC The CIPTIC was established by the Act for the Establishment of and Procedure for Intellectual Property and International Trade Court B.E. 2539 (1996).110 c. Cases that the CIPTIC adjudicates:  Civil cases regarding trademark, copyright and patent infringement under the Trademark Act, the Copyright Act and the Patent Act.  Civil cases arising from agreement on technology transfers or licensing agreements.  Civil cases regarding international sale, exchange of goods or financial instruments, international services, international carriage, insurance and other related transactions, and so on.111 d. Primary proceedings regarding civil remedies

 Final remedies Payment of damages and injunctions are the primary remedies against the infringement of IPRs).112

 Tentative injunction Before the plaintiff files a lawsuit seeking a remedy, he can file a request for a tentative injunction, under Article 77bis of the Patent Act, Article 116 of the Trademark Act, Article 65 of the Copyright Act, Article 8 of the Trade Secret Act, and so on113, established according to Section 50(1)(a) of the TRIPS Agreement.

 Anton Piller Order The Anton Piller Order is a court order that grants a plaintiff the right to search the premises of a defendant (the person who allegedly infringed the plaintiff’s IPRs) and seize evidence, without prior notice to the defendant, in emergency cases where such evidence can be missed or destroyed.114

110 http://www.ipitc.coj.go.th/info.php?cid=1&pm=1 111 http://www.ipitc.coj.go.th/info.php?cid=1&pm=1 112 See Chapter I. with respect to the details. 113 See pages 595-596 of Chapter 13 of Title 2 “King of Thailand”, Intellectual Property Systems in Asian Countries, written by Masatoshi Ohara (Seirin Shoin, 2010) (written in Japanese).

114 http://www.thailawforum.com/articles/ipvichai2.html

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e. Statistics The number of civil cases that the CIPTIC adjudicated from 2003-2007 is as follows115:

Offenses Under Number of cases filed 2003 2004 2005 2006 2007 Total Trademarks Act 27 27 23 23 18 118 Copyright Act 19 29 35 29 26 138 Patent Act 7 18 11 19 4 59 Trade Secret Act 2 5 3 4 1 15 Total 55 79 72 75 49

3. Judicial Enforcement (Criminal)

(1) The CIPTIC

a. Jurisdiction As stated above, the CIPTIC has the power to adjudicate criminal cases regarding IP, as well as civil cases.

b. Cases that the CIPTIC adjudicates  Offenses regarding trademark, copyright and patent infringement under the Trademark, the Copyright and the Patent Acts.  Criminal cases concerning offenses related to trade provided in Sections 271 – 275 of the Criminal Code.116

c. Primary proceedings regarding criminal remedies

 Filing a criminal complaint by the rights holder Rights holders may file a criminal complaint with the investigating authorities such as the ECD or DIS (see (2) below) to commence an investigation. The complainant is required to provide evidence of infringement.

115 See page 602 of Chapter 13 “King of Thailand” of “Intellectual Property Systems in Asian Countries” (Seirin Syoin, 2010).

116 http://www.ipitc.coj.go.th/info.php?cid=1&pm=1

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 Anton Piller Order Victims of infringement can file an Anton Piller Order before filing a criminal complaint.117 d. Statistics The number of criminal cases that the CIPTIC adjudicated from 2003-2007 is as follows:

Offenses Under Number of cases filed 2003 2004 2005 2006 2007 Articles 271-275 78 128 85 51 72 of the Penal Code Trademark Act 2,056 2,417 2,515 3,368 3,562 Copyright Act 1,846 2,792 2,943 3,417 2,778 Trade Secret Act 2 3 7 2 4 Patent Act 19 13 15 12 7

(2) Investigating authorities a. Department of Special Investigation (“DSI”), Ministry of Justice The DSI is a law enforcement agency that was established pursuant to the Ministries, Bureaus, and Departments Restructuring Act B.E. 2545 (2002) in order to prevent, suppress, and control serious crime as well as to coordinate with the agencies of the public and private sectors, both in Thailand and overseas.118 b. Economic and Cyber Crime Division (“ECD”) of the Royal Thai Office The ECD is the investigating authority in charge of economic crimes, including crimes regarding patents, trademarks and copyrights.119

Attachment 1 (II Thailand)

117 See page 600 of Chapter 13 “King of Thailand” of “Intellectual Property Systems in Asian Countries” (Seirin Syoin, 2010).

118 https://www.dsi.go.th/index.php?option=com_content&view=article&id=4144&Itemid=3&Itemid=2 119 See page 593 of Chapter 13 of Title 2 “King of Thailand”, Intellectual Property Systems in Asian Countries, written by Masatoshi Ohara (Seirin Shoin, 2010) (written in Japanese), page 39 of “Anti-copying and imitation manual (Thailand) (version 2007)” (http://www.jetro.go.jp/world/asia/th/ip/pdf/2008_mohou.pdf).

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The Department of Intellectual Property (“DIP”)120

120 http://www.ipthailand.go.th/ipthailand/index.php?option=com_content&task=category§ionid=17&id=10 5&Itemid=184

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Attachment 2 (II Thailand)

Customs Department1

1 http://internet1.customs.go.th/wps/wcm/connect/custen/aboutus/aboutus

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III. Registration flow regarding the primary four IP rights

1. Flowchart procedures

With respect to the application and registration flowchart procedures regarding patents, trademarks, industrial design and copyrights, see Attachment 1.2

2. Application and registration outline

Patents Language All applications and documents submitted with the application shall be printed or typed in Thai including descriptions, claims and abstracts; In the case where the applicant has filed an application for a patent or petty patent in a foreign country, the applicant may request to submit the description of the invention, claims and abstract in the foreign language of the original application. In such a case, the applicant shall submit the description of the invention, claims and abstract in Thai which is accurate and corresponding to the original application within ninety days following the filing of the application. (Article 12(2) of the Ministerial Regulations No. 21 (B.E. 2542)3) Fees Fee for application: 500 THB Fee for publication: 250 THB Fee for grant of patent: 350 THB4 Where to apply An applicant shall submit necessary documents to the Department of Intellectual Property, Ministry of Commerce (DIP). In applying for a patent for an invention, the applicant shall file the

2 http://www.ipthailand.go.th/ipthailand/index.php?option=com_content&task=view&id=1076&Itemid=2 06&lang=en http://www.ipthailand.go.th/ipthailand/index.php?option=com_content&task=view&id=1080&Itemid=264 http://www.ipthailand.go.th/ipthailand/index.php?option=com_content&task=view&id=1077&Itemid=206 http://www.ipthailand.go.th/ipthailand/index.php?option=com_content&task=view&id=676&Itemid=399http:// www.ipthailand.go.th/ipthailand/index.php?option=com_content&task=view&id=676&Itemid=399 3 http://www.jpo.go.jp/shiryou_e/s_sonota_e/fips_e/pdf/thailand/patents_regulations.pdf 4 Pages 5-6 of “Mini Guide for Systems regarding Industrial Properties Rights in Thailand,” (2012, Japan Institute for Promoting Invention and Innovation). (http://www.globalipdb.jpo.go.jp/jpowp/wp- content/uploads/2013/09/44bf651ff0653ffd312428bb75d19b8f.pdf) (written in Japanese)

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application, in the form prescribed by the Director-General, with the competent officer or send the application by registered mail to the competent officer to any of the following places: (1) the DIP; (2) any provincial commercial office or governmental office prescribed by the Director-General. (Article 2 of Ministerial Regulations No. 21 (B.E. 2542)) Examination Not only formal examinations, but also substantive examinations are conducted. The DIP is the agency in charge of examinations. In order to facilitate the examination of a patent application, the Director-General may request any government department, unit or organization or any foreign or international patent office or organization, to examine the application [for substantive examinations]. The Director-General may treat such examination as having been done by the competent officer. (Article 25 of the Patent Act5) Notice When the Director-General has considered the examination report and sees no reason to refuse the grant of a patent, and there has been no opposition under Article 31 or there has been an opposition but the Director-General has decided that the invention belongs to the applicant, the Director-General shall order that the invention is to be registered and granted to the applicant. The competent officer shall notify the applicant that the fee must be paid for the grant of a patent within sixty days from the receipt of such notice. (Article 33 of the Patent Act) Where the applicant, opposing party, respondent or appellant is not a resident of Thailand, he shall appoint an agent registered with the Director-General to act for him in the country. (Article 13 of Ministerial Regulations No. 21 (B.E. 2542)) Publication of patent Patent applications which satisfy the formal requirements are applications published after the applicant pays the necessary fee. (Article 28 of the Patent Act) Such applications are published through CD-ROMs issued by the DIP about three times per month, or the online system of the DIP’s

5 http://www.jpo.go.jp/shiryou_e/s_sonota_e/fips_e/pdf/thailand/patents_act.pdf

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website. Anyone can see the publication of applications through these methods.6 Publication of Granted A granted patent is recorded in the patent register. (Article 33 of the patents Patent Act) Information of registration of a patent is published through the online system of the DIP’s website7 and certain printed mediums located at the DIP.8

Trademarks Language Application documents shall be written in Thai.9 Fees Fee for application: 500 THB Fee for registration: 300 THB10 Where to apply An applicant shall submit necessary documents to the DIP. Examination Not only formal examinations but also substantive examinations are conducted. The DIP is the agency in charge of examinations. Notice Summonses, notices and other communications to an applicant, opposer, owner of a registered trademark, service mark, certification mark or collective mark, licensee or any other person pursuant to this Act shall be sent by registered acknowledgement mail to the office or address given in the application for registration or as registered, as the case may be. If the delivery by the means set forth in the first paragraph is not possible, service may be made by an officer or by again sending it by registered acknowledgement mail. If service is by an officer, if the recipient is not present, the communication may be delivered to any person of legal age who lives or works in the office or at the address or it may be posted in a conspicuous place at the office or address of the recipient.

6 Page 11 of the “Anti-copying and imitation manual (Thailand) (version 2007).” (http://www.jetro.go.jp/world/asia/th/ip/pdf/2008_mohou.pdf) (written in Japanese). 7 http://203.209.117.243/DIP2013/simplesearch.php 8 Page 23 of the following website: https://www.jetro.go.jp/world/asia/asean/ip/pdf/report_accessibility_to_industrialpropertyrights_rev.pdf (written in Japanese)

9 Page 4 of “Mini Guide for Systems regarding Industrial Properties Rights in Thailand.” 10 Page 18 of “Mini Guide for Systems regarding Industrial Properties Rights in Thailand.”

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Seven days after delivery by the means set forth in paragraph two have elapsed, the communication shall be deemed to have been received by the addressee. (Article 104 of the Trademark Act11) Note: For a trademark to be registrable, the applicant or his agent shall have an office or address for communication with the Registrar in Thailand. (Article 10 of the Trademark Act) Publication of Trademark applications which the Registrar believe satisfy the formal trademark applications requirements and substantial requirements are published. (Article 29 of the Trademark Act) Such applications are published through booklets and CD-ROMs issued by the DIP about two or three times per week. Anyone can buy these booklets and CD-ROMs.12 Publication of A registered trademark is recorded in the register of trademarks. registered trademarks Any person shall be entitled, during office hours, to inspect the register of trademarks and files thereof, to obtain copies or certified copies of documents and apply for certification at the Registrar of the particular registration upon the payment of the fees prescribed in the Ministerial Regulations. (Article 103 of the Trademark Act) Information of registration of a trademark is also published through the online system of the DIP’s website.13

Industrial Designs Language Same as the Patent Act. (Articles 23 and 12(2) of the Ministerial Regulations No. 21 (B.E. 2542)) Fees Fee for application: 250 THB Fee for publication: 250 THB Fee for registration: 500 THB14 Where to apply Same as the Patent Act. (Articles 23 and 2 of the Ministerial Regulations No. 21 (B.E. 2542)) Examination Not only formal examinations but also substantive examinations are conducted. The DIP is the agency in charge of examinations.

11 http://www.jpo.go.jp/shiryou_e/s_sonota_e/fips_e/pdf/thailand/marks_act.pdf 12 Page 31 of the “Anti-copying and imitation manual (Thailand) (version 2007).” 13 http://203.209.117.221/tm-system/ 14 Page 14 of “Mini Guide for Systems regarding Industrial Properties Rights in Thailand.”

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Notice Same as the Patent Act. (Articles 65 and 33 of the Patent Act, Articles 23 and 13 of Ministerial Regulations No. 21 (B.E. 2542)) Publication of Same as the Patent Act. (Articles 65 and 28 of the Patent Act)15 industrial design applications Publications of A granted industrial design is recorded on the industrial design registered industrial register. (Articles 65 and 33 of the Patent Act) designs The methods of publication of a registered industrial design are basically the same as patents.16

Copyrights Language The application form is written and is premised on being filed in Thai.17 Fees No fee18 Where to apply An applicant shall submit an application form to the DIP or the local finance bureau.19 Examination There is only a formal examination. There is no substantial examination. Notice An applicant shall specify the contact address in Thailand and telephone number to which the owner of the right or his representative can be contacted for convenience to follow-up with the documents or results in the case the documents or results are incomplete in the application form.20

15 Page 22 of the “Anti-copying and imitation manual (Thailand) (version 2007).” 16 Page 24 of the following website: https://www.jetro.go.jp/world/asia/asean/ip/pdf/report_accessibility_to_industrialpropertyrights_rev.pdf (written in Japanese)

17 http://www.ipthailand.go.th/ipthailand/index.php?option=com_content&task=category§ionid=21&i d=476&Itemid=401 18 Page 63 of “Handbook of Countermeasures against Copyright Infringements in Thailand,” issued by the Agency of Cultural Affairs (the “ACA”) in Japan. (written in Japanese).

http://www.bunka.go.jp/chosakuken/kaizokuban/pdf/24_tai_singai_handbook_ver2.pdf 19 Page 62 of “Handbook of Countermeasures against Copyright Infringements in Thailand.” 20 http://www.ipthailand.go.th/ipthailand/index.php?option=com_content&task=view&id=677&Itemid=399 please also see an English translation of the application form at page 65 of the “Handbook of Countermeasures against Copyright Infringements in Thailand.”

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Publication A registered work is publicly announced at the DIP.

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Attachiment1 (III Thailand)

Patent

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Trademarks

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Patent in

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Copyright

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■ Vietnam

I. Outline of Intellectual Property Systems

1. Process of the establishment of the government office which administers intellectual property in Vietnam

(1) Process of establishment

National Office of Intellectual Property of Vietnam (the “NOIP”) has explained in its website as follows21: In 1959, the Division on Innovation for Technical Improvement was established, as one of the agencies subordinate to the State Committee of Science. In 1964, the Central Council for verification of innovations was established with the composition of representatives of the State Committee of Science, the Trade Union, Ministry of Labor, the Central Office for emulation under the Government Office, the State Committee on Planning, and a number of famous scientists. The Standing Office, which became a specialized section in charge of innovative activities, was also established under the Central Council for verification of innovations. The Standing office was often referred to as the Innovation Committee. In 1965, the Regulations on prize awards for technical innovations, etc. were promulgated. This was for the first time the Government promulgated a legal document stipulating in detail the scheme of remuneration for innovations. Then the Innovation Committee, in cooperation with other related agencies at the central level, provided guidance for the establishment of Innovation Verification Councils at various levels, trained and equipped them with professional knowledge, participated in the verification of innovations of high value of ministries and provinces. In the early 1970s, the widespread innovation movement required a specialized organization capable of assisting the leadership of the State Committee of Science and Technology in organizing and managing innovative activities nationwide. For this reason, in 1973, the Innovation Committee was renamed the Innovation and Discovery Division.

In 1981, Decree 31-CP, which for the first time stipulated the protection of inventions, was

21 http://www.noip.gov.vn/web/noip/home/en?proxyUrl=/noip/cms_en.nsf/(agntDisplayContent)?OpenAge nt&UNID=EB0B3AF324E3B02A47257674002A9E32

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approved. On July 29, 1982, the Council of Ministers promulgated Decree No. 125/HDBT on the reorganization of the State Committee of Science and Technology, where the National Office of Inventions was a subordinate agency. The date was considered as the establishment day of the National Office of Inventions - the predecessor of the National Office of Industrial Property Office at present. In 1993, the National Office of Inventions was renamed the National Office of Industrial Property (the “NOIP”).

(2) Dimensions of the NOIP at the initial stage

The NOIP has explained in its website as follows22: a. Organizations According to the Regulations on the organization and the functioning of the National Office of Inventions, issued in 1983, the Office then had five divisions as follows: Division for Legal Affairs and Legal Protection of Trademarks and Inventions; Patent Documentation and Information Division; Division for the Management of Innovative and Inventive Activities and Trademarks; Division for General Affairs and Publication; Division for Personnel, Administrative Affairs and Accountancy. However, until 1988, the said organizational structure was not implemented as it had been stated. b. Numbers of staff At the beginning, the National Office of Inventions had in total 27 officials, which were divided into two specialized groups: the Management Group and the Information Group. Since 1983, the staff of the National Office of Inventions has continuously increased. Especially, the personnel of the Office increased by 33 employees, out of which 22, after having graduated in the Soviet Union, participated in a training course on intellectual property (hereinafter referred to “IP”). At the end of 1989, the total size of the staff of the Office was 60 people; in 198923 , the number reached 142 people.

22 Refer to the one before. 23 Original description on the official site of NOIP, but it is apparently wrong. The correct description is probably “in 1999”.

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In late 1989 and the 1990s, due to the difficulty in internal organization and living standards, a fairly large number of staff (some 50 people) quit the Office. Up to 1992, the number of staff had declined to 86 (including permanent and contracted officers). Industrial property activities in general, and the NOIP in particular, faced great challenges, among which were the shortage of human resources and scattered activities. To overcome these difficulties, the NOIP reshuffled professional activities, and on the other hand, continued to train and reinforce new staff.

In 2011, the number of staff reached 275, of which the number of examination officers for patents was 42, the number of examination officers for industrial design was 12, and the number of examination officers for trademarks was 53).24

2. Summary of current IP laws and primary IP-related authorities

(1) Primary IP-related authorities a. National Office of Intellectual Property of Vietnam (the “NOIP”) (under the Ministry of Science and Technology) (http://www.noip.gov.vn/web/noip/home/en) b. Ministry of Science and Technology (“MOST”) (http://www.most.gov.vn/Desktop.aspx/Home-EN/) c. Copyright Office of Vietnam (under the Ministry of Culture, Sports and Tourism (“MOCST”)) (http://www.cov.gov.vn/cbqen/index.php) d. Market Surveillance Agency (under the Ministry of Industry and Trade of the Socialist Republic of Vietnam (“MOIT”)) (http://www.moit.gov.vn/en/Pages/OrganDetail.aspx?tochucID=74) e. The Customs of Vietnam (“GDC”) (under Ministry of Finance) (http://www.customs.gov.vn/home.aspx?language=en-US)

24 http://www.jpo.go.jp/torikumi/kokusai/kokusai2/pdf/ipcoop_asia-pacific/2011_02.pdf (see page 4) (written in Japanese)

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f. People’s Police * The official website written in English cannot be found. g. People’s Committee * The official website written in English cannot be found. h. People’s Courts * The official website written in English cannot be found. i. The People’s Procuracy of Vietnam (http://www.vksndtc.gov.vn/tienganh.aspx) j. Vietnam International Arbitration Center (http://www.viac.org.vn/en-US/Home/default.aspx) * Not governmental organization.

(2) Primary IP laws currently provided in Vietnam a. Intellectual Property Law (established in 2005, finally amended in 2009) (http://www.noip.gov.vn/noip/resource.nsf/vwSelectImageResourceUrl/6A7273451828D7 9C472576720020482D/$FILE/Intelletual%20Property%20Law%20of%20Viet%20Nam% 202005.pdf) (the version as of the establishment in 2005) * See Attachment 1 regarding the amendatory law of 2009. * The Intellectual Property Law set down the protection of copyrights, industrial property rights (including patents, industrial designs, layout-designs, marks, trade names, geographical indications) and rights to plant varieties. b. (established in 2004) (http://www.noip.gov.vn/noip/resource.nsf/vwSelectImageResourceUrl/3BB6484D113465 174725767200206A82/$FILE/Vietnam%20Competition%20Law%20_E_.pdf) c. Technology Transfer Law (established in 2006) (http://www.noip.gov.vn/noip/resource.nsf/vwSelectImageResourceUrl/56EB8F7FC1A2F E554725767200205417/$FILE/Law%20on%20Technology%20Transfer.pdf) d. Science and Technology Law (established in 2000)

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(http://www.noip.gov.vn/noip/resource.nsf/vwSelectImageResourceUrl/6A7273451828D7 9C472576720020482D/$FILE/LAW%20ON%20SCIENCE%20AND%20TECHNOLOGY .pdf) e. Criminal Code (http://www.wipo.int/wipolex/en/text.jsp?file_id=184118) * The Criminal Code set down criminal punishments against infringements of intellectual properties in Article 131, Article 170a and Article 171. * In 2009, Article 170a was added and Article 171 was amended. See Attachment 2 regarding the amendatory law of 2009. f. In addition to the above, various ordinances and decrees have been provided. (http://www.noip.gov.vn/web/noip/home/en?proxyUrl=/noip/cms_en.nsf/(agntDisplayCont ent)?OpenAgent&UNID=A3257F48CA99547A4725773100292BFB)) (http://www.noip.gov.vn/web/noip/home/en?proxyUrl=/noip/cms_en.nsf/(agntDisplayCont ent)?OpenAgent&UNID=3B7C678BFD43BB3C4725767200218627)

3. Character of the four primary IP laws25

Patent Law Year of establishment / 2005/2009 Year of latest amendment (= current law) Definition of an An invention means a technical solution, in the form of a product or Invention a process which is intended to solve a problem by application of laws of nature. (Article 4(12)26) Requirements for Patents: novelty, an inventive step, and being susceptible to patentability industrial application. (Article 58(1)) Utility Solution Patent: novelty and being susceptible to industrial application. (Article 58(2))

25 The content source of this section is mainly English translations of respective laws. In addition, due to space constraints, the contents are a summary of these translations. Therefore, please refer to the original laws and consult an Vietnamese lawyer for a certainty sake if you have a legal problem.

26 Unless specifically noted, “Article” means an article of the Intellectual Property Law. The same shall apply hereafter.

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Grounds of 1. Scientific discoveries or theories, mathematical methods; unregistrability 2. Schemes, plans, rules and methods for performing mental acts, training domestic animals, playing games, doing business; computer programs; 3. Presentations of information; 4. Solutions of aesthetical characteristics only; 5. Plant varieties, animal breeds; 6. Processes of plant or animal production which are principally of a biological nature other than microbiological ones; 7. Human and animal disease prevention, diagnostic and treatment methods. (Article 59) 8. inventions which are contrary to the social ethics and public order and prejudicial to defense and security. (Article 8(1)) Term of protection Patent: 20 years from the filing date (no extension) (Article 93(2)) Utility Solution Patent: 10 years from the filing date (no extension) (Article 93(3)) Patent owners’ rights Owners of industrial property objects shall have the following economic rights: a/ To use or authorize others to use industrial property objects according to the provisions of Article 124 and Chapter X of this Law; b/ To prevent others from using industrial property objects according to the provisions of Article 125 of this Law; c/ To dispose of industrial property objects according to the provisions of Chapter X of this Law. (Article 123(1))

Use of an invention means the performance of the following acts: a/ Manufacturing the protected product; b/ Applying the protected process; c/ Exploiting the utility of the protected product or the product manufactured under the protected process; d/ Circulating, advertising, offering, stocking for circulation the product mentioned at Point c of this Clause; e/ Importing the product mentioned at Point c of this Clause.

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(Article 124(1)) Acts of infringement The following acts shall be regarded as infringements of the rights of owners of inventions: 1. Using protected inventions within the valid terms of protection without the permission of owners; 2. Using inventions without paying compensation according to the provisions on provisional rights in Article 131 of this Law. (Article 126(1)) Limitations Purpose of research, prior use, etc. (Article 125(2), Article 134) Remedies against acts of Civil remedies: infringement Payment of damages, injunctions, public apology, etc. (Article 202)

Criminal remedies: Acts of infringing of patents were eliminated from the scope of Article 171 of the Criminal Code by the 2009 amendment of such Code. However, certain acts of infringement of patents can be subject to Articles 156-158 of the Criminal Code (punishment against manufacturing and/or trade in fake goods, etc.). In the case of manufacturing/trading in fake goods, the punishment shall be a fine of up to fifty million dong or subject to imprisonment for up to five (5) years, or both. (Article 156)

Administrative remedies: Caution, monetary fine, suspension of business activities, etc. (Article 214) Notes There are provisions regarding compulsory licensing. (Articles 145-147) Licensing must be established in the form of written contracts. (Article 141(2)) A license contract shall be legally effective against a third party upon registration. (Article 148(2))

Trademark Law Year of establishment / 2005/2009 Year of latest

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amendment (= current law) Definition of a A mark means any sign used to distinguish goods and/or services of trademark different organizations or individuals. (Article 4(16)) Requirements for A mark shall be protected when it satisfies the following conditions: registration 1. Being a visible sign in the form of letters, words, drawings or images, including holograms, or a combination thereof, represented in one or more colors; 2. Being capable of distinguishing goods or services of the mark owner from those of other subjects. (Article 72) Grounds of Signs identical with or confusingly similar to national flags or unregistrability national emblems, etc. (Article 73) Signs which are contrary to the social ethics and public order and prejudicial to defense and security. (Article 8(1)) Term of protection 10 years from the filing date. Renewable for many consecutive terms, each 10 years. (Article 94(6)) Trademark owners’ Owners of industrial property objects shall have the following rights economic rights: a/ To use or authorize others to use industrial property objects according to the provisions of Article 124 and Chapter X of this Law; b/ To prevent others from using industrial property objects according to the provisions of Article 125 of this Law; c/ To dispose of industrial property objects according to the provisions of Chapter X of this Law. (Article 123(1))

Use of a mark means the performance of the following acts: a/ Affixing the protected mark on goods, goods packages, means of business, means of service provision, transaction documents in business activities; b/ Circulating, offering, advertising for sale or stocking for sale goods bearing the protected mark; c/ Importing goods or services bearing the protected mark. (Article 124(5))

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Acts of infringement 1. The following acts, if performed without the permission of the mark owners, shall be regarded as infringements of the rights to marks: a/ Using signs identical with protected marks for goods or services identical to goods or services on the lists registered together with such marks; b/ Using signs identical to protected marks for goods or services similar or related to those goods or services on the lists registered together with such marks, if such use is likely to cause confusion as to the origin of the goods or services; etc. (Article 129(1)) Limitations Parallel importations are permitted. (Article 125(2)(b)) Remedies against acts of Civil remedies: infringement Payment of damages, injunctions, public apology, etc. (Article 202)

Criminal remedies: Acts of infringing of trademarks are subject to Article 171 (punishment against infringement upon industrial property rights to marks or geographical indications on a commercial scale) of the Criminal Code and Articles 156-158 of the Criminal Code (punishment against manufacturing and/or trade in fake goods, etc.). Imposing a fine of up to five hundred million dong or subject to non-custodial reform for up to two (2) years. However, the punishment shall be a fine of up to one billion dong or being sentenced to up to three (3) years of imprisonment and a fine of up to one billion dong, in the case of (a) in an organized manner and (b) committing the crime more than once. (Article 171 of Criminal Code) With respect to the punishment against manufacturing and/or trade in fake goods, if such goods are food and medicines, the maximum sentence is capital punishment. (Article 157(4))

Administrative remedies: Caution, monetary fine, suspension of business activities, etc. (Article 214) Notes The ownership right shall be invalidated if the mark has not been

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used for five (5) years. (Article 95(1)(d), Article 136(2)) Licensing must be established in the form of written contracts (Article 141(2)) A license contract shall be legally effective against a third party upon registration. (Article 148(2))

Industrial Design Law Year of establishment / 2005/2009 Year of latest amendment (= current law) Definition of an Industrial design means the specific appearance of a product industrial design embodied by three-dimensional configurations, lines, colors, or a combination of these elements. (Article 4(13)) Requirements for Novelty, creativity, and being susceptible to industrial application. registration (Article 63) Grounds of The following subject matters shall not be protected as industrial unregistrability designs: 1. Appearance of a product, which is dictated by the technical features of the product; 2. Appearance of a civil or an industrial construction work; 3. Shape of a product, which is invisible during the use of the product. (Article 64)

Industrial designs which are contrary to the social ethics and public order and prejudicial to defense and security. (Article 8(1)) Term of protection Five (5) years from the filing date. Renewable for two (2) consecutive terms, each five (5) years. (Article 93(4)) Industrial design Owners of industrial property objects shall have the following owners’ rights economic rights: a/ To use or authorize others to use industrial property objects according to the provisions of Article 124 and Chapter X of this Law; b/ To prevent others from using industrial property objects according to the provisions of Article 125 of this Law;

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c/ To dispose of industrial property objects according to the provisions of Chapter X of this Law. (Article 123(1))

Use of an industrial design means the performance of the following acts: a/ Manufacturing products with appearance embodying the protected industrial design; b/ Circulating, advertising, offering and stocking for circulation products mentioned at Point a of this Clause; c/ Importing products mentioned at Point a of this Clause. (Article 124(2)) Acts of infringement The following acts shall be regarded as infringements of the rights of owners of inventions: 1. Using protected industrial designs or industrial designs insignificantly different from protected industrial designs within the valid terms of protection without permission of owners; 2. Using industrial designs without paying compensation according to the provisions on provisional rights in Article 131 of this Law. (Article 126(1)) Limitations Prior use, non-commercial use, etc. (Article 125(2)(a), Article 134) Remedies against acts of Civil remedies: infringement Payment of damages, injunctions, public apology, etc. (Article 202)

Criminal remedies: Same as patent law. (Articles 156-158 of the Criminal Code)

Administrative remedies: Caution, monetary fine, suspension of business activities, etc. (Article 214)

Copyright Law Year of establishment / 2005/2009

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Year of latest amendment (= current law) Definition of a work A work means a creation of the mind in the literary, artistic or scientific domain, whatever may be the mode or form of its expression. (Article 4(7)) Registration (or A registration is not necessary to be protected. (Article 6(1)) notification) However, registrations of copyright or related rights are possible. (Articles 49-55) Registration is recommended because in an infringement litigation, the plaintiff must certify that he is the rights holder. To register a copyright, a rights holder should submit an application form to the MOST, as per the instructions. You may see such instructions written in English on the website of the MOST.27 You may also see the form of registration certificate and the application file.28 With respect to the past records of registration (the number of the registration), please see Attachment 3. Term of protection 1 Cinematographic works, photographic works, works of applied art and anonymous works have a term of protection of 75 years from the date of first publication. For cinematographic works, photographic works and works of applied art which remain unpublished within 25 years from the date of fixation, the term of protection is 100 years from the date of fixation. 2 A work not specified at Point of this Clause is protected for the whole life of the author, and 50 years after his/her death. (Article 27(2)) Copyright owners’ right Authors or copyright holders, etc. have the following rights: a/ To make derivative works; b/ To display their works to the public;

27 http://www.cov.gov.vn/cbqen/index.php?option=com_content&view=article&id=696%3A-instructions-on- copyright-and-related-rights-registration&catid=61%3Ath-tc-ng-ky&Itemid=74 28 http://www.cov.gov.vn/cbqen/index.php?option=com_content&view=article&id=699%3Aform-of-copyright- registration-certificate&catid=61%3Ath-tc-ng-ky&Itemid=74, http://www.cov.gov.vn/cbqen/index.php?option=com_content&view=article&id=695%3Aapplication- file&catid=61%3Ath-tc-ng-ky&Itemid=74

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c/ To reproduce their works; d/ To distribute or import original works or copies thereof; e/ To communicate their works to the public by wire or wireless means, electronic information networks or any other technical means; f/ To lease original cinematographic works and computer programs or copies thereof. (Article 20(1)(2)) Acts of infringement Appropriating copyright to literary, artistic or scientific works, impersonating authors, publishing or distributing works without permission of authors, etc. (Article 28) Limitations Research or teaching purposes, citations, personal use, etc. (Article 25, Article 26) Remedies against acts of Civil remedies: infringement Payment of damages, injunctions, public apology, etc. (Article 202)

Criminal remedies: Acts of infringing of copyright are subject to Article 131 (punishment against appropriating works, etc.) and Article 170a (punishment against reproducing works, etc.). In the case of reproducing works on a commercial scale, the punishment is up to five hundred million dong, or non-custodial reform for up to two (2) years. However, the punishment shall be a sentence of up to three (3) years of imprisonment and a fine of up to one billion dong, in the case of (a) in an organized manner, (b) committing the crime more than once. (Article 170a of the Criminal Code)

Administrative remedies: Caution, monetary fine, suspension of business activities, etc. (Article 214) Notes Related rights (rights of performers, producers of phonograms and video recordings, broadcasting organizations) are also protected. (Article 29-31)

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Moral rights of authors are protected. (Article 19) Moral rights of performers are protected. (Article 29(2))

Attachment 1 (I Vietnam) THE STATE PRESIDENT

Order No. 12/2009/L-CTN of June 29, 2009, on the promulgation of law THE PRESIDENT OF THE SOCIALIST REPUBLIC OF VIETNAM Pursuant to Articles 103 and 106 of the 1992 Constitution of the Socialist Republic of Vietnam, which was amended and supplemented under Resolution No. 51/2001/QH10 of December 25, 2001, of the Xth National Assembly, the 10th session; Pursuant to Article 91 of the Law on Organization of the National Assembly; Pursuant to Article 57 of the Law on Promulgation of Legal Documents, PROMULGATES: the Law Amending and Supplementing a Number of Articles of the Law on Intellectual Property, which was passed on June 19, 2009, by the XIIth National Assembly of the Socialist Republic of Vietnam at its 5th session. President of the Socialist Republic of Vietnam NGUYEN MINH TRIET

Law Amending and Supplementing a Number of Articles of the Law on Intellectual Property (No. 36/2009/QH12) Pursuant to the 1992 Constitution of the Socialist Republic of Vietnam, which was amended and supplemented under Resolution No. 51/2001/QH10; The National Assembly promulgates the Law Amending and Supplementing a Number of Articles of the Law on Intellectual Property. Article 1. To amend and supplement a number of articles of the Law on Intellectual Property: 1. To amend and supplement Article 3 as follows: “Article 3. Subject matters of intellectual property rights 1. Subject matters of copyright include literary, artistic and scientific works; subject matters of copyright- related rights include performances, phonograms, video recordings, broadcasts and encrypted program- carrying satellite signals. 2. Subject matters of industrial property rights include inventions, industrial designs, layout-designs of semiconductor integrated circuits, trade secrets, marks, trade names and geographical indications. 3. Subject matters of rights to plant varieties include reproductive and harvested materials.”

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2. To amend and supplement Article 4 as follows: “Article 4. Interpretation of terms In this Law, the terms below are construed as follows: 1. Intellectual property rights means rights of organizations and individuals to intellectual assets, including copyright and copyright-related rights, industrial property rights and rights to plant varieties. 2. Copyright means rights of organizations and individuals to works they have created or own. 3. Copyright-related rights (below referred to as related rights) means rights of organizations and individuals to performances, phonograms, video recordings, broadcasts and encrypted program-carrying satellite signals. 4. Industrial property rights means rights of organizations and individuals to inventions, industrial designs, layout-designs of semiconductor integrated circuits, trade secrets, marks, trade names, geographical indications and trade secrets they have created or own, and the right to repression of unfair competition. 5. Rights to plant varieties means rights of organizations and individuals to new plant varieties they have selected, created or discovered and developed, or own. 6. Intellectual property right holder means an owner of intellectual property rights or an organization or individual that is assigned intellectual property rights by the owner. 7. Work means a creation of the mind in the literary, artistic or scientific domain, whatever may be the mode or form of its expression. 8. Derivative work means a work which is translated from one language into another, adapted, modified, transformed, compiled, annotated or selected. 9. Published work, phonogram or video recording means a work, phonogram or video recording which has been made available in a reasonable quantity of copies to the public with the permission of the copyright holder or related right holder. 10. Reproduction means the making of one or many copies of a work or a phonogram or video recording by whatever mode or in whatever form, including the backup of the work in electronic form. 11. Broadcasting means the transmission of the sound or image or both of a work, a performance, a phonogram, a video recording or a broadcast to the public by wire or wireless means, including satellite transmission, in such a way that members of the public may access that work from a place and at a time they themselves select. 12. Invention means a technical solution in the form of a product or a process which is intended to solve a problem by application of laws of nature. 13. Industrial design means a specific appearance of a product embodied by three-dimensional configurations, lines, colors, or a combination of these elements. 14. Semiconductor integrated circuit means a product, in its final form or an intermediate form, in which the elements, at least one of which is an active element, and some or all of the interconnections, are

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integrally formed in or on a piece of semiconductor material and which is intended to perform an electronic function. Integrated circuit is synonymous to IC, chip and microelectronic circuit. 15. Layout-design of semiconductor integrated circuit (below referred to as layout-design) means a three- dimensional disposition of circuit elements and their interconnections in a semiconductor integrated circuit. 16. Mark means any sign used to distinguish goods or services of different organizations or individuals. 17. Collective mark means a mark used to distinguish goods or services of members from those of non- members of an organization which is the owner of such mark. 18. Certification mark means a mark which is authorized by its owner to be used by another organization or individual on the latter’s goods or services, for the purpose of certifying the origin, raw materials, materials, mode of manufacture of goods or manner of provision of services, quality, accuracy, safety or other characteristics of goods or services bearing the mark. 19. Integrated mark means identical or similar marks registered by the same entity and intended for use on products or services which are of the same type or similar types or interrelated. 20. Well-known mark means a mark widely known by consumers throughout the Vietnamese territory. 21. Trade name means a designation of an organization or individual in business activities, capable of distinguishing the business entity bearing it from another entity in the same business domain and area. A business area mentioned in this Clause means a geographical area where a business entity has its partners, customers or earns its reputation. 22. Geographical indication means a sign which identifies a product as originating from a specific region, locality, territory or country. 23. Trade secret means information obtained from financial or intellectual investment activities, which has not yet been disclosed and can be used in business. 24. Plant variety means a plant grouping within a single botanical taxonomy of the lowest known rank, which is morphologically uniform and suitable for being propagated unchanged, and can be defined by the expression of phenotypes resulting from a genotype or a combination of given genotypes, and distinguished from any other plant grouping by the expression of at least one inheritable phenotype. 25. Protection title means a document granted by a competent state agency to an organization or individual in order to establish industrial property rights to an invention, industrial design, layout-design, trademark or geographical indication; or rights to a plant variety. 26. Reproductive material means a plant or a part thereof capable of growing into a new plant for use in reproduction or cultivation. 27. Harvested material means a plant or a part thereof obtained from the cultivation of a reproductive material.” 3. To amend and supplement Article 7 as follows: “Article 7. Limitations on intellectual property rights

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1. Intellectual property right holders may only exercise their rights within the scope and term of protection provided for in this Law. 2. The exercise of intellectual property rights must neither prejudice the State’s interests, public interests, legitimate rights and interests of other organizations and individuals, nor violate other relevant provisions of law. 3. In the circumstances where the achievement of defense, security, people’s livelihood objectives and other interests of the State and society specified in this Law needs to be guaranteed, the State may prohibit or restrict the exercise of intellectual property rights by the holders or compel the licensing by the holders of one or several of their rights to other organizations or individuals under appropriate terms. The limitation on rights to inventions classified as state secrets complies with regulations of the Government.” 4. To amend and supplement Article 8 as follows: “Article 8. The State’s intellectual property policies 1. To recognize and protect intellectual property rights of organizations and individuals on the basis of harmonizing benefits of intellectual property rights holders and public interests; not to protect intellectual property objects which are contrary to social ethics and public order and prejudicial to defense and security. 2. To encourage and promote the creation and utilization of intellectual assets in order to contribute to socio-economic development and improvement of the people’s material and spiritual life. 3. To provide financial supports for the receipt and exploitation of assigned intellectual property rights in public interests; to encourage organizations and individuals at home or abroad to provide financial aid for creative activities and the protection of intellectual property rights. 4. To prioritize investment in training and retraining the contingent of cadres, civil servants, public employees and other relevant subjects engaged in the protection of intellectual property rights and the research into and application of sciences and technologies to the protection of intellectual property rights. 5. To mobilize social resources for investment in raising the capacity of the system to protect intellectual property rights, thereby meeting requirements of socio-economic development and international economic integration.” 5. To amend and supplement Article 14 as follows: “Article 14. Types of works eligible for copyright protection 1. Literary, artistic and scientific works eligible for copyright protection include: a/ Literary and scientific works, textbooks, teaching courses and other works expressed in written languages or other characters; b/ Lectures, addresses and other sermons; c/ Press works; d/ Musical works; e/ Dramatic works;

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f/ Cinematographic works and works created by a process analogous to cinematography (below collectively referred to as cinematographic works); g/ Plastic-art works and works of applied art; h/ Photographic works; i/ Architectural works; j/ Sketches, plans, maps and drawings related to topography, or scientific works; k/ Folklore and folk art works of folk culture; l/ Computer programs and data compilations. 2. Derivative works shall be protected under Clause 1 of this Article only if it is not prejudicial to the copyright to works used to create these derivative works. 3. Protected works defined in Clauses 1 and 2 of this Article must be created personally by authors through their intellectual labor without copying others’ works. 4. The Government shall guide in detail the types of works specified in Clause 1 of this Article.” 6. To amend and supplement Article 25 as follows: “Article 25. Cases of use of published works in which permission and payment of royalties or remunerations are not required 1. Cases of use of published works in which permission or payment of royalties or remunerations is not required include: a/ Duplication of works for personal scientific research or teaching purpose; b/ Reasonable recitation of works without misrepresenting the authors’ views for commentary or illustrative purpose; c/ Recitation of works without misrepresenting the authors’ views in articles published in newspapers or periodicals, in radio or television broadcasts, or documentaries; d/ Recitation of works in schools for lecturing purpose without misrepresenting the authors’ views and not for commercial purpose; e/ Reprographic reproduction of works by libraries for archival and research purpose; f/ Performance of dramatic works or other performing-art works in mass cultural, communication or mobilization activities without collecting any charges in any form; g/ Audiovisual recording of performances for the purpose of reporting current events or for teaching purpose; h/ Photographing or televising of plastic art, architectural, photographic, applied-art works displayed at public places for the purpose of presenting images of these works; i/ Transcription of works into Braille or characters of other languages for the blind; j/ Importation of copies of others’ works for personal use. 2. Organizations and individuals that use works defined in Clause 1 of this Article may neither affect the normal utilization of these works nor prejudice the rights of the authors or copyright holders; and shall

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indicate the authors’ names, and sources and origins of these works. 3. The provisions of Points a and e, Clause 1 of this Article are not applicable to architectural works, plastic works and computer programs.” 7. To amend and supplement Article 26 as follows: “Article 26. Cases of use of published works in which permission is not required but the payment of royalties or remunerations is required 1. Broadcasting organizations that use published works in making their broadcasts, which are sponsored, advertised or charged in whatever form, are not required to obtain permission but have to pay royalties or remunerations to copyright holders from the date of use. Levels of royalties, remunerations or other material benefits and modes of payment shall be agreed upon by involved parties. If no agreement is reached, involved parties shall comply with regulations of the Government or institute lawsuits at court under law. Broadcasting organizations that use published works in making their broadcasts, which are not sponsored, advertised or charged in whatever form, are not required to obtain permission but have to pay royalties or remunerations to copyright holders from the date of use under regulations of the Government. 2. Organizations and individuals that use works under Clause 1 of this Article must neither affect the normal utilization of these works nor prejudice the rights of the authors or copyright holders; and shall indicate the authors’ names, and sources and origins of the works. 3. The use of works in the cases specified in Clause 1 of this Article does not apply to cinematographic works.” 8. To amend and supplement Article 27 as follows: “Article 27. Term of copyright protection 1. The moral rights provided for in Clauses 1, 2 and 4, Article 19 of this Law shall be protected for an indefinite term. 2. The moral rights provided for in Clause 3, Article 19 and the economic rights provided for in Article 20 of this Law enjoy the following term of protection: a/ Cinematographic works, photographic works, works of applied art and anonymous works have a term of protection of seventy five years from the date of first publication. For cinematographic works, photographic works and works of applied art which remain unpublished within twenty five years from the date of fixation, the term of protection is one hundred years from the date of fixation. For anonymous works, when information on their authors is published, the term of protection will be calculated under Point b of this Clause. b/ A work not specified at Point a of this Clause is protected for the whole life of the author and for fifty years after his/her death. For a work under joint authorship, the term of protection expires in the fiftieth year after the death of the last surviving co-author; c/ The term of protection specified at Points a and b of this Clause expires at 24:00 hrs of December 31 of

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the year of expiration of the copyright protection term.” 9. To amend and supplement Article 30 as follows: “Article 30. Rights of producers of phonograms and video recordings 1. Producers of phonograms and video recordings have the exclusive right to exercise or authorize others to exercise the following rights: a/ To directly or indirectly reproduce their phonograms and video recordings; b/ To import and distribute to the public their original phonograms and video recordings and copies thereof by sale, rent or distribution by whatever technical means accessible by the public. 2. Producers of phonograms and video recordings will enjoy material benefits when their phonograms and video recordings are distributed to the public.” 10. To amend and supplement Article 33 as follows: “Article 33. Cases of use of related rights in which permission is not required but payment of royalties or remunerations is required 1. Organizations and individuals that directly or indirectly use phonograms or video recordings already published for commercial purposes in making their broadcasts, which are sponsored, advertised or charged in whatever form, are not required to obtain permission but have to pay agreed royalties or remunerations to authors, copyright holders, performers or producers of phonograms or video recordings, or broadcasting organizations from the date of use. In case no agreement is reached, they shall comply with regulations of the Government or institute lawsuits at court under law. Organizations and individuals that directly or indirectly use phonograms or video recordings already published for commercial purposes in making their broadcasts, which are not sponsored, advertised or charged in whatever form, are not required to obtain permission but have to pay agreed royalties or remunerations to authors, copyright holders, performers or producers of phonograms or video recordings, or broadcasting organizations from the date of use under regulations of the Government. 2. Organizations and individuals that use phonograms or video recordings already published in their business or commercial activities are not required to obtain permission but have to pay agreed royalties or remunerations to authors, copyright holders, performers or producers of phonograms or video recordings, or broadcasting organizations from the date of use. In case no agreement is reached, they shall comply with regulations of the Government or institute lawsuits at court under law. 3. Organizations and individuals that use the rights provided for in Clauses 1 and 2 of this Article must neither affect the normal utilization of performances, phonograms, video recordings or broadcasts, nor prejudice the rights of performers, producers of phonograms and video recordings, and broadcasting organizations.” 11. To amend and supplement Article 41 as follows: “Article 41. Copyright holders being right assignees 1. Organizations and individuals that are assigned one, several or all of the rights specified in Article 20

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and Clause 3, Article 19 of this Law under contracts are copyright holders. 2. Organizations and individuals that are managing anonymous works enjoy rights of owners until the names of authors of these works are identified.” 12. To amend and supplement Article 42 as follows: “Article 42. Copyright holders being the State 1. The State is the holder of copyright to the following works: a/ Anonymous works, except those specified in Clause 2, Article 41 of this Law; b/ Works of which terms of protection have not expired but their copyright holders die without heirs, their heirs renounce succession or are deprived of the right to succession. c/ Works over which the ownership right has been assigned by their copyright holders to the State. 2. The Government shall specify the use of works under state ownership.” 13. To amend and supplement Article 87 as follows: “Article 87. Right to register marks 1. Organizations and individuals may register marks to be used for goods they produce or services they provide. 2. Organizations and individuals that conduct lawful commercial activities may register marks for products they are marketing but produced by others, provided that the producers neither use such marks for their products nor object to such registration. 3. Lawfully established collective organizations may register collective marks to be used by their members under regulations on use of collective marks. For signs indicating geographical origins of goods or services, organizations that may register them are collective organizations of organizations or individuals engaged in production or trading in relevant localities. For other geographical names or signs indicating geographical origins of local specialties of Vietnam, the registration must be permitted by competent state agencies. 4. Organizations with the function of controlling and certifying the quality, properties, origin or other relevant criteria of goods or services may register certification marks, provided that they are not engaged in the production or trading of these goods or services. For other geographical names or signs indicating geographical origins of local specialties of Vietnam, the registration thereof must be permitted by a competent state agency. 5. Two or more organizations or individuals may jointly register a mark in order to become its co-owners on the following conditions: a/ This mark is used in the names of all co-owners or used for goods or services which are produced or traded with the participation of all co-owners; b/ The use of this mark causes no confusion to consumers as to the origin of goods or services. 6. Persons having the registration right defined in Clauses 1, 2, 3, 4 and 5 of this Article, including those having filed registration applications, may assign the registration right to other organizations or

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individuals in the form of written contracts, bequeathal or inheritance under law, provided that the assigned organizations or individuals satisfy the relevant conditions on the persons having the registration right. 7. For a mark protected in a country being a contracting party to a treaty which prohibits the representative or agent of a mark owner to register such mark and to which the Socialist Republic of Vietnam is also a contracting party, this representative or agent is not permitted to register the mark unless it is so agreed by the mark owner, unless a justifiable reason is available.” 14. To amend and supplement Article 90 as follows: “Article 90. The first-to-file principle 1. In case many applications are filed for registration of the same invention or similar inventions, or for registration of industrial designs identical with or insignificantly different from one another, the protection title may only be granted to the valid application with the earliest priority or filing date among applications satisfying all the conditions for the grant of a protection title. 2. In case there are many applications filed by different persons for registration of identical or confusingly similar marks for identical or similar products or services, or in case there are many applications filed by the same person for registration of identical marks for identical products or services, the protection title may only be granted for the mark in the valid application with the earliest priority or filing date among applications satisfying all the conditions for the grant of a protection title. 3. In case there are many registration applications specified in Clauses 1 and 2 of this Article and satisfying all the conditions for the grant of a protection title and having the same earliest priority or filing date, the protection title may only be granted for the object of a single application out of these applications under an agreement of all applicants. Without such agreement, all relevant objects of these applications will be refused for the grant of a protection title.” 15. To amend and supplement Article 119 as follows: “Article 119. Time limit for processing industrial property registration applications 1. An industrial property registration application will have its form examined within one month from the filing date. 2. An industrial property registration application shall be substantively examined within the following time limits: a/ For an invention, eighteen months from the date of its publication if a request for substantive examination is filed before the date of application publication, or from the date of receipt of a request for substantive examination if such request is filed after the date of application publication; b/ For a mark, nine months from the date of application publication; c/ For an industrial design, seven months from the date of application publication; d/ For a geographical indication, six months from the date of application publication. 3. The time limit for re-examination of an industrial property registration application is equal to two-

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thirds of the time limit for the initial examination and may, in complicated cases, be prolonged but must not exceed the time limit for the initial examination. 4. The duration for modification or supplementation of applications by applicants will not be counted into the time limit specified in Clause 1, 2 or 3 of this Article. The time limit for processing requests for modification or supplementation of applications must not exceed one-third of the corresponding time limit specified in Clause 1 or 2 of this Article.” 16. To amend and supplement Article 134 as follows: “Article 134. Right of prior use of inventions and industrial designs 1. In case a person has, before the filing date or priority date (if any) of an invention or industrial design registration application, used or prepared necessary conditions for using an invention or industrial design identical with the protected invention or industrial design stated in that registration application but created independently (below referred to as prior use right holder), then after a protection title is granted, he/she may continue using such invention or industrial design within the scope and volume of use or use preparations without having to obtain permission of or paying compensations to the owner of the protected invention or industrial design. The exercise of the right of prior users of inventions or industrial designs is not regarded as an infringement upon the right of invention or industrial design owners. 2. Holders of prior use right to inventions or industrial designs may not assign such right to others, unless that right is assigned together with the transfer of business or production establishments which have used or are prepared to use the inventions or industrial designs. Prior use right holders may not expand the use scope and volume unless it is so permitted by invention or industrial design owners.” 17. To amend and supplement Article 154 as follows: “Article 154. Conditions for industrial property representation service business Organizations that satisfy the following conditions may provide industrial property representation services as industrial property representation service organizations: 1. Being law-practicing businesses, cooperatives or organizations, or scientific and technological service organizations lawfully established and operating, except foreign law-practicing organizations operating in Vietnam; 2. Having the function of providing industrial property representation services, which is stated in their business registration certificates or operation registration certificates (below collectively referred to as business registration certificates); 3. Their heads or persons authorized by their heads must satisfy the conditions for industrial property representation service practice, specified in Clause 1, Article 155 of this Law.” 18. To amend and supplement Article 157 as follows: “Article 157. Organizations and individuals that have rights to plant varieties protected 1. Organizations and individuals that have rights to plant varieties protected are those that select and breed or discover and develop plant varieties or invest in the selection and breeding or the discovery and

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development of plant varieties or are transferred rights to plant varieties. 2. Organizations and individuals defined in Clause 1 of this Article include Vietnamese organizations and individuals; organizations and individuals of foreign countries which have concluded with the Socialist Republic of Vietnam agreements on the protection of plant varieties; foreign organizations and individuals that have permanent offices or residences in Vietnam or have establishments producing or trading in plant varieties in Vietnam; foreign organizations and individuals that have permanent offices or residences or establishments producing or trading in plant varieties in countries which have concluded with the Socialist Republic of Vietnam agreements on the protection of plant varieties.” 19. To amend and supplement Article 160 as follows: “Article 160. Distinctness of plant varieties 1. A plant variety will be considered distinct if it is clearly distinguishable from any other plant variety whose existence is a matter of common knowledge at the time of filing the application or the priority date, as the case may be. 2. Plant varieties whose existence is a matter of common knowledge defined in Clause 1 of this Article are those falling into one of the following cases: a/ Their reproductive or harvested materials have been widely used in the market of any country at the time of filing of the protection registration application; b/ They have been protected or registered in the list of plant varieties in any country; c/ They are subject matters of protection registration applications or applications for registration in the list of plant varieties in any country, provided that these applications are not rejected.” 20. To amend and supplement Article 163 as follows: “Article 163. Denominations of plant varieties 1. The registrant shall designate with the state management agency in charge of rights to plant varieties a proper denomination for a plant variety which must be the same as the denomination already registered for protection in any country which has concluded with the Socialist Republic of Vietnam an agreement on the protection of plant varieties. 2. The denomination of a plant variety shall be considered proper if it is distinguishable from those of other plant varieties of common knowledge in the same or similar species. 3. Denominations of plant varieties shall be considered improper in the following cases: a/ They consist of numerals only, unless such numerals are relevant to characteristics or the breeding of such varieties; b/ They violate social ethics; c/ They may easily cause misleading as to features or characteristics of such varieties; d/ They may easily cause misleading as to identifications of the breeders; e/ They are identical or confusingly similar to marks, trade names or geographical indications protected before the date of publication of protection registration applications of such plant varieties;

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f/ They affect prior rights of other organizations or individuals. 4. Organizations and individuals that offer for sale or market reproductive materials of plant varieties shall use the denominations of such plant varieties as stated in their protection titles even after the expiration of the term of protection. 5. When denominations of plant varieties are combined with trademarks, trade names or indications similar to denominations of plant varieties already registered for sale offer or marketed, such denominations must still be distinguishable.” 21. To amend and supplement Article 165 as follows: “Article 165. Registration of rights to plant varieties 1. Organizations and individuals defined in Article 157 of this Law may file applications for registration of rights to plant varieties (below referred to as protection registration applications) directly or through their lawful representatives in Vietnam. 2. Organizations that satisfy the following conditions may provide services of representing rights to plant varieties in the capacity as rights-to-plant varieties representation service organizations: a/ Being Vietnamese law-practicing businesses, cooperatives or organizations, scientific and technological service organizations which are lawfully established and operating, except foreign law-practicing organizations practicing in Vietnam; b/ Having the function of providing rights-to-plant varieties representation services as stated in their business registration certificates or operation registration certificates (below collectively referred to as business registration certificates); 3. Heads of those organizations or persons authorized by heads of those organizations who satisfy the conditions specified in Clauses 4 and 5 of this Article may provide services of representing rights to plant varieties. 4. Individuals shall be allowed to provide services of representing rights to plant varieties when satisfying the following conditions: a/ Possessing a rights-to-plant varieties representation service practice certificate; b/ Working in a rights-to-plant varieties representation service organization. 5. Individuals who satisfy the following conditions will be granted rights-to-plant varieties representation service practice certificates: a/ Being a Vietnamese citizen and having the full civil act capacity; b/ Permanently residing in Vietnam; c/ Possessing a university degree; d/ Having personally conducted legal activities related to rights to plant varieties for five or more consecutive years, or personally examined various applications for registration of rights to plant varieties in a national or international office for rights to plant varieties for five or more consecutive years, or graduated from a training course on the law on rights to plant varieties as recognized by a competent

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agency; e/ Being other than civil servants or public employees currently working in state agencies competent to establish and secure the enforcement of rights to plant varieties; f/ Having passed an examination of the profession of representing rights to plant varieties, organized by a competent agency. 6. The Government shall specify lawful representatives for filing applications and rights-to-plant varieties representation service organizations.” 22. To amend and supplement Article 186 as follows: “Article 186. Rights of protection certificate holders 1. A protection certificate holder has the right to exercise or authorize others to exercise the following rights to reproductive materials of a protected plant variety: a/ To conduct production or propagation; b/ To process them for the purpose of propagation; c/ To offer them for sale; d/ To sell them or conduct other marketing activities; e/ To export them; f/ To import them; g/ To store them for conducting acts specified at Points a, b, c, d, e and f of this Clause. 2. Rights of a plant variety protection title holder provided for in Clause 1 of this Article are applicable to materials harvested from the illegal use of reproductive materials of a protected plant variety, unless the protection title holder does not exercise his/her rights to reproductive materials though having an opportunity to do so. 3. To prevent others from using the plant variety under Article 188 of this Law. 4. To pass by inheritance or bequeath or assign the rights to the plant variety under Chapter XV of this Law.” 23. To amend and supplement Article 187 as follows: “Article 187. Extension of rights of protection certificate holders Rights of a protection certificate holder may be extended to the following plant varieties: 1. Plant varieties which originate mainly from the protected plant variety, unless such protected plant variety itself originates from another protected plant variety. A plant variety is considered originating from a protected plant variety if such plant variety still retains the expression of the essential characteristics resulting from the genotype or combination of genotypes of the protected variety, except differences resulting from impacts on the protected variety; 2. Plant varieties which are not definitely distinct from the protected plant variety; 3. Plant varieties the production of which requires the repeated use of the protected plant variety.” 24. To supplement and supplement Article 190 as follows:

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“Article 190. Limitations on rights of plant variety protection certificate holders 1. The following acts are not regarded as infringements of rights to protected plant varieties: a/ Using plant varieties for personal and non-commercial purposes; b/ Using plant varieties for testing purposes; c/ Using plant varieties to create new plant varieties, except the case specified in Article 187 of this Law; d/ Using harvested materials of protected plant varieties by individual production households for self- propagation and cultivation in the next season on their own land areas. 2. Rights to plant varieties are not applicable to acts related to materials of protected plant varieties which have been sold or otherwise brought into the Vietnamese or foreign markets by protection certificate holders or their licensees, except the following acts: a/ Acts relating to further propagation of such plant varieties; b/ Acts relating to export of reproductive materials of such plant varieties to countries where the genera or species of such plant varieties are not protected, unless such materials are exported for consumption purpose.” 25. To amend and supplement Article 194 as follows: “Article 194. Assignment of rights to plant varieties 1. Assignment of rights to a plant variety means the transfer by the plant variety protection certificate holder of all rights to that plant variety to the assignee. The assignee will become the plant variety protection certificate holder from the date of registration of the assignment contract with a state management agency in charge of rights to plant varieties according to law-prescribed procedures. 2. In case rights to a plant variety are under joint ownership, the assignment of these rights to another person must be agreed upon by all co-owners. 3. The assignment of rights to a plant variety must be effected in the form of written contract. 4. The assignment of rights to a plant variety created with state budget funds complies with the Law on Technology Transfer.” 26. To amend and supplement Article 201 as follows: “Article 201. Intellectual property assessment 1. Intellectual property assessment means the use by organizations or individuals defined in Clauses 2 and 3 of this Article of their professional knowledge and expertise to assess and make conclusion on matters related to intellectual property rights. 2. Businesses, cooperatives, non-business units or law-practicing organizations, except foreign law- practicing organizations practicing in Vietnam which satisfy the following conditions may conduct intellectual property assessment: a/ Having personnel and physical-technical foundations meeting law-prescribed requirements on assessment operations; b/ Having the function of conducting intellectual property assessment as stated in their business

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registration certificates or operation registration certificates; c/ Their heads or persons authorized by their heads possess intellectual property assessor cards. 3. Individuals who fully satisfy the following conditions may be granted intellectual property assessor cards by competent state agencies: a/ Being a Vietnamese citizen and having full civil act capacity; b/ Permanently residing in Vietnam; c/ Possessing good ethical qualities; d/ Possessing a university or higher degree in a profession relevant to domains in which an assessor card is applied for, having conducted professional activities in these domains for five or more years and passed a professional assessment examination. 4. State agencies competent to handle acts of infringing upon intellectual property rights may request intellectual property assessment when handling cases or matters they have accepted. 5. Intellectual property right holders and other related organizations and individuals may request intellectual property assessment to protect their legitimate rights and interests. 6. The Government shall specify intellectual property assessment organization and activities.” 27. To amend and supplement Article 211 as follows: “Article 211. Intellectual property right infringements subject to administrative sanction 1. Organizations and individuals that commit any of the following acts of infringing upon intellectual property rights shall be administratively sanctioned: a/ Infringing upon intellectual property rights which causes damage to authors, owners, consumers or society; b/ Producing, importing, transporting or trading in intellectual property counterfeit goods defined in Article 213 of this Law or assigning others to do so; c/ Producing, importing, transporting, trading in or storing stamps, labels or other articles bearing a counterfeit mark or geographical indication or assigning others to do so. 2. The Government shall specify acts of infringing upon intellectual property rights which shall be administratively sanctioned, sanctioning forms and levels, and sanctioning procedures. 3. Organizations and individuals that commit acts of unfair competition in intellectual property shall be administratively sanctioned under the competition law.” 28. To amend and supplement Article 214 as follows: “Article 214. Forms of administrative sanction and remedies 1. Organizations and individuals that commit acts of infringing upon intellectual property rights defined in Clause 1, Article 211 of this Law shall be compelled to terminate their infringing acts and imposed one of the following principal sanctions: a/ Caution; b/ Fine.

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2. Depending on the nature and seriousness of their infringements, intellectual property rights-infringing organizations or individuals are also subject to either of the following additional sanctions: a/ Confiscation of intellectual property counterfeit goods, raw materials, materials and means used mainly for the production or trading of these intellectual property counterfeit goods; b/ Suspension for a definite time of business activities in domains where infringements have been committed. 3. In addition to the sanctions specified in Clauses 1 and 2 of this Article, intellectual property rights infringers are also subject to either or both of the following consequence remedies: a/ Compelled destruction or distribution or use for non-commercial purposes of intellectual property counterfeit goods as well as raw materials, materials and means used mainly for the production or trading of these intellectual property counterfeit goods, provided that the destruction, distribution or use does not affect the exploitation of rights by intellectual property right holders; b/ Compelled transportation out of Vietnamese territory of transit goods infringing upon intellectual property rights or compelled re-export of intellectual property counterfeit goods, as well as imported means, raw materials and materials used mainly for the production or trading of these intellectual property counterfeit goods, after infringing elements are removed from these goods. 4. Administrative sanctions and the competence to administratively sanction infringements upon intellectual property rights comply with the law on handling of administrative violations.” 29. To amend and supplement Article 218 as follows: “Article 218. Procedures for application of the measure of suspension of customs procedures 1. When persons requesting the suspension of customs procedures have fulfilled their obligations specified in Article 217 of this Law, customs offices shall issue decisions on suspension of customs procedures with regard to goods lots in question. 2. The duration of suspension of customs procedures is ten working days after the customs procedure suspension requester receives the customs office’s notice of customs procedures suspension. In case the customs procedure suspension requester has a justifiable reason, this duration may be prolonged but must not exceed twenty working days, provided that the requester deposits a security specified in Clause 2, Article 217 of this Law. 3. Upon the expiration of the duration specified in Clause 2 of this Article, if customs procedure suspension requesters do not institute civil lawsuits and customs offices decide not to accept the cases for handling of administrative violations of goods lot exporters or importers according to administrative procedures, customs offices have the following responsibilities: a/ To continue carrying out customs procedures for goods lots in question; b/ To compel customs procedure suspension requesters to compensate all the damage caused to goods lot owners due to their unreasonable requests, and pay expenses for the warehousing and preservation of goods as well as other expenses incurred by customs offices and other related agencies, organizations and

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individuals under the customs law; c/ To refund to customs procedure suspension requesters the remaining security amount after the obligation of paying compensations and expenses specified at Point b of this Clause is fulfilled.” 30. To amend and supplement Article 220 as follows: “Article 220. Transitional provisions 1. Copyright and related rights protected under legal documents which took effect before the effective date of this Law continue to be protected under this Law if they remain in the term of protection by that date. 2. Applications for registration of copyright, related rights, inventions, utility solutions, industrial designs, trademarks, appellations of origin of goods, layout-designs or plant varieties, which have been filed with competent agencies before the effective date of this Law, continue to be processed under legal documents effective at the time of their filing. 3. All rights and obligations conferred by protection titles granted under the provisions of law which are effective before the effective date of this Law and procedures for maintenance, renewal, modification, invalidation, licensing, ownership assignment, settlement of disputes relating to these protection titles are governed by this Law, except grounds for invalidation of protection titles which are subject to the provisions of law which are effective at the time of grant of these protection titles. This provision also applies to decisions on registration of appellations of origin of goods issued under the provisions of law which are effective before the effective date of this Law. State management agencies in charge of industrial property rights shall carry out procedures for the grant of geographical indication registration certificates for appellations of origin of goods. 4. Trade secrets and trade names which have been existing and protected under the Government’s Decree No. 54/2000/ND-CP of October 3, 2000, on the protection of industrial property rights to trade secrets, geographical indications, trade names and the protection of the right to repression of industrial property- related unfair competition, continue to be protected under this Law. 5. From the effective date of this Law, geographical indications, including those protected under the Decree mentioned in Clause 4 of this Article, may only be protected after they are registered under this Law.” Article 2. To replace the phrase “Ministry of Culture and Information” with the phrase “Ministry of Culture, Sports and Tourism” in Clauses 2, 3 and 5, Article 11; Point a, Clause 2, Article 50; and Clause 4, Article 51 of Law No. 50/2005/QH11 on Intellectual Property. Article 3. 1. This Law takes effect on January 1, 2010. 2. The Government shall detail and guide the implementation of articles and clauses of this Law assigned to it, and guide other necessary contents of this Law to meet state management requirements. This Law was passed on June 19, 2009, by the XIIth National Assembly of the Socialist Republic of

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Vietnam at its 5th session. Chairman of the National Assembly NGUYEN PHU TRONG

Attachment2 (I Vietnam) THE STATE PRESIDENT

Order No. 13/2009/L-CTN of June 29, 2009, on the promulgation of law THE PRESIDENT OF THE SOCIALIST REPUBLIC OF VIETNAM Pursuant to Articles 103 and 106 of the 1992 Constitution of the Socialist Republic of Vietnam, which was amended and supplemented under Resolution No. 51/2001/QH10 of December 25, 2001, of the Xth National Assembly, the 10th session; Pursuant to Article 91 of the Law on Organization of the National Assembly; Pursuant to Article 57 of the Law on Promulgation of Legal Documents, PROMULGATES: the Law Amending and Supplementing a Number of Articles of the Penal Code, which was passed on June 19, 2009, by the XIIth National Assembly of the Socialist Republic of Vietnam at its 5th session. President of the Socialist Republic of Vietnam NGUYEN MINH TRIET

Law Amending and Supplementing a Number of Articles of the Penal Code (No. 37/2009/QH12) Pursuant to the 1992 Constitution of the Socialist Republic of Vietnam, which was amended and supplemented under Resolution No. 51/2001/QH10; The National Assembly promulgates the Law Amending and Supplementing a Number of Articles of Penal Code No. 15/1999/QH10. Article 1. To amend, supplement and annul a number of articles of the Penal Code .… 11. To add the following Article 170a: “Article 170a. Infringing upon copyright and related rights 1. Those who, without permission of holders of copyright or related rights, commit either of the following acts of infringing upon copyright or related rights currently protected in Vietnam on a commercial scale, shall be imposed a fine of between fifty million and five hundred million dong or subject to non-custodial reform for up to two years: a/ Reproducing works, phonograms or video recordings;

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b/ Distributing to the public copies of works, phonograms or video recordings. 2. Committing the crime in either of the following circumstances, offenders shall be imposed a fine of between four hundred million and one billion dong or sentenced to between six months and three years of imprisonment: a/ In an organized manner; b/ Committing the crime more than once. 3. Offenders may also be imposed a fine of between twenty million and two hundred million dong, banned from holding certain posts or practicing certain professions or performing certain jobs for between one and five years.” 12. To amend and supplement Article 171 as follows: “Article 171. Infringing upon industrial property rights 1. Those who intentionally infringe upon industrial property rights to marks or geographical indications currently under protection in Vietnam on a commercial scale, shall be imposed a fine of between fifty million and five hundred million dong or subject to non-custodial reform for up to two years. 2. Committing the crime in either of the following circumstances, offenders shall be imposed a fine of between four hundred million and one billion dong or sentenced to between six months and three years of imprisonment: a/ In an organized manner; b/ Committing the crime more than once. 3. Offenders may also be imposed a fine of between twenty million and two hundred million dong, banned from holding certain posts or practicing certain professions or performing certain jobs for between one and five years.” … Article 3. 1. This Law takes effect on January 1, 2010. 2. The Government, the Supreme People’s Court and the Supreme People’s Procuracy shall, within the ambit of their respective tasks and powers, guide the implementation of this Law. This Law was passed on June 19, 2009, by the XIIth National Assembly of the Socialist Republic of Vietnam at its 5th session. Chairman of the National Assembly NGUYEN PHU TRONG

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Attachment 3 (I Vietnam)

Number of applications and copyright registrations (or notifications) (Vietnam)

Year Number of Applications Number of Registrations 2005 1,894 - 2006 - - 2007 3,231 - 2008 4,800 - 2009 - - 2010 - - 2011 Total: 3,950 16 Arts: 1,468 Software: 498

Source: Page 22 of the “Handbook of Protection of Intellectual Properties in ASEAN and India” (Japan External Trade Organization, 2013).29

29 http://www.jpo.go.jp/torikumi/mohouhin/mohouhin2/manual/pdf/asean1.pdf (written in Japanese)

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II. Outline of enforcement regarding intellectual property rights

1. Administrative Enforcement

(1) The primary administrative agencies involved in IPRs infringement, as specifically provided in the Intellectual Property Law a. The primary relevant agencies Pursuant to the Intellectual Property Law (see Chapter I), the administrative bodies which are involved in enforcement against infringement of IPRs are primarily the following seven entities (see Articles 11 and 200):

(i) The Inspectorate of the Ministry of Science and Technology (the “MOST”) (http://www.most.gov.vn/Desktop.aspx/Home-EN/) (http://www.most.gov.vn/Desktop.aspx/Introduction/Organizational- Chart/The_Ministry_Inspectorate/)

* The MOST shall be answerable to the Government for assuming the prime responsibility for performing the state management of IP and the state management of industrial property rights.

(ii) The Inspectorate of the Ministry of Culture, Sports and Tourism (the “MOCST”) (http://english.cinet.vn/Default.aspx)

The Copyright Office of Vietnam (under the Ministry of Culture, Sports and Tourism (the “MOCST”)) (http://www.cov.gov.vn/cbqen/index.php)

(iii) The Inspectorate of the Ministry of Agriculture and Rural Development (the “MARD”) (http://www.agroviet.gov.vn/en/Pages/default.aspx)

(iv) The Market Management Office, the Ministry of Industry and Trade (the “MOIT”) (http://www.moit.gov.vn/en/Pages/default.aspx)

* The English version of the Intellectual Property Law provided on the NOIP’s

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website describes a “market management office.” However, such a term cannot be found on the website of the MOIT. The word which is the most similar, and which can be found on the website, is the “Market Surveillance Agency.” (http://www.moit.gov.vn/en/Pages/OrganDetail.aspx?tochucID=74) Perhaps they are the same body, and the terms have merely been translated differently.

(v) The Provincial / Municipal People’s Committees * The official website written in English cannot be found.

(vi) The People’s Police * The official website written in English cannot be found.

(vii) Customs Offices * Please see (2) below. b. Roles The areas that respective bodies are in charge of are as follows30 31:

Governmental Agencies Assigned Areas The MOST Infringement of industrial property rights in the areas of manufacturing, trade, distribution, and advertisement of products and services. The MOCST Infringement of copyrights. The MARD Infringement of plant varieties. “Market Management Infringement in the process of trade and transportation of goods Office” of the MOIT in Vietnam. Police Investigation of IPRs infringement (both industrial property rights and copyrights), gathering evidence, and so on. People’s Committees Investigation of the implementation of laws regarding IPRs (both industrial property rights and copyrights) within their

30 Page 50 of the “Handbook of Protection of Intellectual Properties in ASEAN and India” (Japan External Trade Organization, 2013) (http://www.jpo.go.jp/torikumi/mohouhin/mohouhin2/manual/pdf/asean1.pdf (written in Japanese)

31 Page 59 of the “Anti-copying and imitation manual (Vietnam) (version 2012)” (http://www.jpo.go.jp/torikumi/mohouhin/mohouhin2/manual/pdf/vietnam2012_1.pdf) (written in Japanese)

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respective jurisdictions. Customs Offices Investigation of infringement of IPRs in the process of importation and exportation of goods. c. Acts subject to administrative sanctions Article 211 of the Intellectual Property Law provides as follows: (1) Organizations and individuals that commit any of the following acts of infringing upon intellectual property rights shall be administratively sanctioned: a/ Infringing upon intellectual property rights, causing damage to authors, owners, consumers, or society; b/ Producing, importing, transporting, or trading in intellectual property counterfeit goods as defined in Article 213 of this Law, or assigning others to do so; c/ Producing, importing, transporting, trading in, or storing stamps, labels, or other articles bearing a counterfeit mark or geographical indication, or assigning others to do so. d. Administrative sanctions The content of the administrative sanctions is provided in Article 214 of the Intellectual Property Law. The main sanctions are cautions and monetary fines. The ceiling for the monetary fines is 500,000,000 dong. e. Other information

 The Copyright Office under the MOCST has provided a comprehensive explanation of the administrative system regarding enforcement against copyright infringement: http://www.cov.gov.vn/cbqen/index.php?option=com_content&view=article&id=61&Itemi d=78

 The NOIP supports the above agencies’ activities by, for example, providing necessary information to such agencies.32

(2) Customs of Vietnam (the “GDC”), under the Ministry of Finance a. Organization

32 http://noip.gov.vn/NOIP/RESOURCE.NSF/vwResourceList/61F28F7168933DB147257BDD003BA5E3 /$FILE/Annual%20Report_NOIP%202012_Resized.pdf (See page 45)

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With respect to the organization of the GDC, please see No. 1 of Attachment 1. b. Basis Article 216(1) of the Intellectual Property Law provides as follows: Measures to control intellectual property-related imports and exports include: a/ Suspension of customs procedures for goods suspected of infringing upon intellectual property rights; b/ Inspection and supervision to detect goods showing signs of intellectual property right infringement. c. Role The GDC seizes goods infringing on IPRs to protect and contribute to the facilitation of development of the national economy, to protect the interests of consumers, to implement international commitments, and so on.33 d. Statistics The GDC provides customs trade statistics on the following website, although it does not seem to include a specific data regarding the seizure of goods infringing upon IPRs: http://www.customs.gov.vn/Lists/EnglishStatistics/Default.aspx?language=en-US

2. Judicial Enforcement (Civil)

(1) People’s Courts a. Basic rule

 A regime of two-level adjudication applies in Vietnam.34

 The basic rule regarding IP-related jurisdiction provided in the Civil Procedure Code35 is

33 http://www.customs.gov.vn/Lists/EnglishIntro/Details.aspx?language=en- US&List=687740d1%2D9f47%2D4017%2D9fe5%2D59a46541d016&ID=40&Web=c00daeed%2D988b%2D 468d%2Db27c%2D717ca31ae3ff http://www.customs.gov.vn/Lists/EnglishIntro/Details.aspx?language=en- US&List=687740d1%2D9f47%2D4017%2D9fe5%2D59a46541d016&ID=9&Web=c00daeed%2D988b%2D4 68d%2Db27c%2D717ca31ae3ff 34 Article 17 of the Civil Procedure Code.

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as follows:  Infringement of IPRs for non-profit purposes is adjudicated in the People’s Courts of rural districts, urban districts, provincial capitals, provincial towns (“district-level People’s Courts”) in the first instance. In this case, the People’s Courts of provinces or centrally-run cities (“provincial-level People’s Courts”) should be the appellate courts.36  Infringement of IPRs for the purpose of profit is adjudicated in the People’s Courts in provincial-level People’s Courts, in the first instance. In this case, the Supreme People’s Court should be the appellate court.37 38 b. Basis Article 202 of the Intellectual Property Law (see Item c below). c. Remedies Article 202 of the Intellectual Property Law provides as follows: Courts shall apply the following civil remedies in handling organizations and individuals that have committed acts of infringing upon intellectual property rights: 1. Compelling the termination of infringing acts; 2. Compelling a public apology and rectification; 3. Compelling the performance of civil obligations; 4. Compelling the payment of damages; 5. Compelling destruction, distribution, or use for non-commercial purposes of goods, raw materials, materials, and means used largely for the production or trading of intellectual property right-infringing goods, provided that such destruction, distribution, or use does not affect the exploitation of rights by intellectual property right holders.

3. Judicial Enforcement (Criminal)

35 http://www.noip.gov.vn/noip/resource.nsf/vwSelectImageResourceUrl/3457A7711572E0534725767200 203DDA/$FILE/CIVIL%20PROCEDURE%20CODE.pdf 36 Articles 33(1)(a) and 25(4) of the Civil Procedure Code. 37 Articles 34(1)(a) and 29(2) of the Civil Procedure Code. 38 Pages 67-68 of the “Anti-copying and imitation manual (Vietnam) (version 2012)” (http://www.jpo.go.jp/torikumi/mohouhin/mohouhin2/manual/pdf/vietnam2012_1.pdf) (written in Japanese). See also “Summary of Amended Civil Procedure Code in Vietnam” by Shusaku Tatara, the JICA (http://www.jica.go.jp/project/vietnam/021/legal/ku57pq00001j1wzj-att/legal_23.pdf)

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(1) People’s Courts a. Basic rule The criminal judiciary system in Vietnam also applies a regime of two-level adjudication.39 The relationship between the first-instance courts and the appellate courts is the same as in civil cases. b. Basis Article 212 of the Intellectual Property Law provides as follows: Individuals who commit acts of infringing upon intellectual property rights involving elements which constitute a crime shall be examined for penal liability pursuant to the provisions of criminal law. c. Punishment As stated in Chapter I, acts which fall into the categories under Article 131 (copyright infringement), Articles 156-158 (manufacturing and/or trade in fake goods, etc.) and Article 171 (industrial rights infringement) are the subject of criminal punishment.

(2) Investigating authorities40 41 a. Prosecutors The organization of prosecutors in Vietnam is comprised of three layers, as follows:  The People’s Prosecuting Institutes at the district level  The People’s Prosecuting Institutes at the provincial level  The Supreme People’s Prosecuting Institute b. Police The organization of the police in Vietnam is comprised of three layers, as follows:

39 Article 20(1) of the Criminal Procedure Code. http://www.noip.gov.vn/noip/resource.nsf/vwSelectImageResourceUrl/3457A7711572E0534725767200203D DA/$FILE/CRIMINAL%20PROCEDURE%20CODE.pdf 40 Pages 63 and 71 of the “Anti-copying and imitation manual (Vietnam) (version 2012)” (http://www.jpo.go.jp/torikumi/mohouhin/mohouhin2/manual/pdf/vietnam2012_1.pdf) (written in Japanese) 41 A legal firm named “Vision & Associates,” located in Vietnam, provides some information regarding IP- related enforcement in Vietnam.

http://www.vision-associates.com/client_resources/27/37/96/Enforcement

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 The Economic Police Team at the district level (belonging to the District Police Unit)  The Economic Police Division at the provincial level (belonging to the Provincial Police Department)  The Economic Police Bureau (belonging to the Ministry of the Police)

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Attachment 1 (II Vietnam) GDC42

MINISTRY OF FINANCE

GENERAL DEPARTMENT OF VIETNAM CUSTOMS

Subordinate and Administrative Units Local Customs Departments

Legal Department Customs Control and Analysts and Provincial/Inter- Supervision Dept. Classification provincial/city Center Customs Dept.

International Import-Export Duty Customs Customs Branches Cooperation Dept. Dept. Research Institute

Personnel and Anti-smuggling and Vietnam Organization Dept. Investigation Dept. Customs school

Finance and Post Clearance Audit Customs Logistics Dept. Dept. Newspaper

General Dept. Customs IT and Office Statistics Dept.

Inspectorate Dept.

42 http://www.customs.gov.vn/Lists/EnglishIntro/Details.aspx?language=en- US&List=687740d1%2D9f47%2D4017%2D9fe5%2D59a46541d016&ID=6&Web=c00daeed%2D988b%2D4 68d%2Db27c%2D717ca31ae3ff

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III. Registration flow regarding primary four IP rights

1. Flowchart procedures

The application and registration flowchart procedures regarding patents, trademarks and industrial design are provided on the website of the NOIP, although they are unclear.43 For the flowchart procedures regarding the registration of copyrights, please see Attachment 1.44

2. Application and registration outline

Patents Language Industrial property registration applications and papers for transactions between the applicants and the state management agency in charge of industrial property rights [the NOIP] shall be made in Vietnamese, except for the following documents, which can be made in another language, but shall be translated into Vietnamese at the request of the state management agency in charge of industrial property rights: a/ Power of attorney; b/ Documents evidencing the registration right; c/ Documents evidencing the ; d/ Other documents supporting the applications. (Article 100(2) of Intellectual Property Law45) Sometimes applications and papers for transactions between the

43 http://www.noip.gov.vn/web/noip/home/en?proxyUrl=/noip/cms_en.nsf/(agntDisplayContent)?OpenAge nt&UNID=56102697F6E208DD4725767B001FE339 http://www.noip.gov.vn/web/noip/home/en?proxyUrl=/noip/cms_en.nsf/(agntDisplayContent)?OpenAgent&U NID=B3437AED611864A44725767B00216D2E http://www.noip.gov.vn/web/noip/home/en?proxyUrl=/noip/cms_en.nsf/(agntDisplayContent)?OpenAgent&U NID=DD54FE67CD78ECE4472576C500396CA3 44 Page 22 of the “Handbook of Protection of Intellectual Properties in ASEAN and India,” (Japan External Trade Organization, 2013). (http://www.jpo.go.jp/torikumi/mohouhin/mohouhin2/manual/pdf/asean1.pdf (written in Japanese)

45 http://www.noip.gov.vn/noip/resource.nsf/vwSelectImageResourceUrl/6A7273451828D79C4725767200 20482D/$FILE/Intelletual%20Property%20Law%20of%20Viet%20Nam%202005.pdf

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applicants and the NOIP in foreign languages might be used as reference data.46 Fees *Filing fee - application fee filed in paper form without a digital database for all the application materials: 180,000 VND - application fee filed in paper form with a digital database for all the application materials: 150,000 VND - application fee filed online: 100,000 VND *Fee to Register a Patent for invention: 120,000 VND47 Where to apply Applications may be filed with the NOIP or at other application receipt locations arranged by the NOIP. Applications may also be sent by post to the above locations of application receipt. (Article 12.1 of Circular No. 01/2007/TT-BKHCN of February 14, 2007, Guiding the Implementation of the Government’s Decree No. 103/2006/ND-CP of September 22, 2006, Detailing and Guiding the Implementation of a Number of Articles of the Law on Intellectual Property Regarding Industrial Property (“Circular No. 01/2007/TT- BKHCN of February 14, 2007”48) Examination Not only formal examinations, but also substantive examinations are conducted. The NOIP is the agency in charge of examinations. (Article 11 of Circular No. 01/2007/TT-BKHCN of February 14, 2007) Notice If the object stated in the application satisfies the protection conditions or the applicant satisfactorily corrects errors or makes reasonable justifications within the time limit specified at Points 15.7.a (i) and (ii) above, the NOIP shall issue a notice on its intended grant of a protection title, setting a time limit of one month from the date of issuance of the notice for the applicant to pay the fee for the grant of a protection title, the fee for notification of the protection title grant decision, the registration fee and the fee for maintenance of the first

46 Page 108 of the “Anti-copying and imitation manual (Vietnam) (version 2012),” (http://www.jpo.go.jp/torikumi/mohouhin/mohouhin2/manual/pdf/vietnam2012_1.pdf) (written in Japanese). 47 http://www.noip.gov.vn/web/noip/home/en?proxyUrl=/noip/cms_en.nsf/(agntDisplayContent)?OpenAge nt&UNID=AFCED3FA1BC7F3744725767F0017C232 48 http://www.wipo.int/wipolex/en/text.jsp?file_id=131995

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year’s validity of invention patent. (Article 15.7(a)(iii) of Circular No. 01/2007/TT-BKHCN of February 14, 2007) Note: Foreign individuals not permanently residing in Vietnam, foreign organizations or individuals having no production or business establishments in Vietnam shall file applications for registration of establishment of industrial property rights through their lawful representatives in Vietnam. (Article 89(2) of Intellectual Property Law) Publication of patent Industrial property registration applications which have been accepted applications as being valid by the state management agency in charge of industrial property rights shall be published in the Official Gazette of Industrial Property according to the provisions of this Article. (Article 110(1) of Intellectual Property Law) Everyone may access detailed information on the nature of the objects stated in the applications published in the Industrial Property Official Gazette or request the NOIP to supply such information and is liable to pay an information supply fee according to regulations. (Article 14.4 of Circular No. 01/2007/TT-BKHCN of February 14, 2007) Publication of Granted A granted patent is recorded in the National Register. (Articles patents 98(1)(2), Article 118 of Intellectual Property Law, Article 19.1(a) of Circular No. 01/2007/TT-BKHCN of February 14, 2007) The National Registers shall be made by the NOIP and archived in the printed or electronic form or in other media. Any person may refer to the electronic registers or request the NOIP to issue copies or extracts of the registers but shall pay a fee for copy issuance. (Article 19.1(e) of Circular No. 01/2007/TT-BKHCN of February 14, 2007) Decisions on grant, termination of validity, invalidation or amendment of protection titles for industrial property rights shall be published by the state management agency in charge of industrial property rights in the Official Gazette of Industrial Property within 60 days as from the date of issuance. (Article 99 of Intellectual Property Law, Article 19.2 of Circular No. 01/2007/TT-BKHCN of February 14, 2007)

Trademarks Language Industrial property registration applications and papers for transactions between the applicants and the state management agency in charge of

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industrial property rights [the NOIP] shall be made in Vietnamese, except for the following documents, which can be made in another language but shall be translated into Vietnamese at the request of the state management agency in charge of industrial property rights: a/ Power of attorney; b/ Documents evidencing the registration right; c/ Documents evidencing the priority right; d/ Other documents supporting the applications. (Article 100(2) of Intellectual Property Law) Fees *Filing fee - application fee filed in paper form without a digital database for all the application materials: 180,000 VND - application fee filed in paper form with a digital database for all the application materials: 150,000 VND - application fee filed online: 100,000 VND *Fee for granting a Certificate for trademark registration: 120,000 VND49 Where to apply Same as for patents. (Article 12.1 of Circular No. 01/2007/TT- BKHCN of February 14, 2007) Examination Same as for patents. (Article 11 of Circular No. 01/2007/TT- BKHCN of February 14, 2007) Notice Same as for patents. (Article 15.7(a)(iii) of Circular No. 01/2007/TT- BKHCN of February 14, 2007, Article 89(2) of Intellectual Property Law) Publication of Same as for patents. (Article 110(1) of Intellectual Property Law, trademark applications Article 14.4 of Circular No. 01/2007/TT-BKHCN of February 14, 2007) Publication of Same as for patents. (Articles 98(1)(2), Article 99 and Article 118 of registered trademarks Intellectual Property Law, Article 19.1(a), Article 19.1(e) and Article 19.2 of Circular No. 01/2007/TT-BKHCN of February 14, 2007)

Industrial Designs Language Industrial property registration applications and papers for transactions

49 http://www.noip.gov.vn/web/noip/home/en?proxyUrl=/noip/cms_en.nsf/(agntDisplayContent)?OpenAge nt&UNID=8C8D2D78B5C6606B4725767F001966B8

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between the applicants and the state management agency in charge of industrial property rights [the NOIP] shall be made in Vietnamese, except for the following documents, which can be made in another language but shall be translated into Vietnamese at the request of the state management agency in charge of industrial property rights: a/ Power of attorney; b/ Documents evidencing the registration right; c/ Documents evidencing the priority right; d/ Other documents supporting the applications. (Article 100(2) of Intellectual Property Law) Fees *Filing fee - application fee filed in paper form without a digital database for all the application materials: 180,000 VND - application fee filed in paper form with a digital database for all the application materials : 150,000 VND - application fee filed online: 100,000 VND *Fee for granting a Patent for Industrial Design: 120,000 VND50 Where to apply Same as for patents. (Article 12.1 of Circular No. 01/2007/TT- BKHCN of February 14, 2007) Examination Same as for patents. (Article 11 of Circular No. 01/2007/TT- BKHCN of February 14, 2007) Notice Same as for patents. (Article 15.7(a)(iii) of Circular No. 01/2007/TT- BKHCN of February 14, 2007, Article 89(2) of Intellectual Property Law) Publication of Same as for patents. (Article 110(1) of Intellectual Property Law, industrial design Article 14.4 of Circular No. 01/2007/TT-BKHCN of February 14, applications 2007) Publications of Same as for patents. (Articles 98(1)(2), Article 99 and Article 118 of registered industrial Intellectual Property Law, Article 19.1(a), Article 19.1(e) and Article designs 19.2 of Circular No. 01/2007/TT-BKHCN of February 14, 2007)

Copyrights Language An application for registration of copyright or related rights

50 http://www.noip.gov.vn/web/noip/home/en?proxyUrl=/noip/cms_en.nsf/(agntDisplayContent)?OpenAge nt&UNID=DDE50F853EE776974725767F002B4103

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comprises: a/ A written declaration for registration of copyright or related rights. A written declaration must be made in Vietnamese. (Article 50(2)(a) of Intellectual Property Law) The documents specified at Point c, d, e and f, Clause 2 of this Article [a letter of authorization, documents proving the right to file an application, written consent of co-authors and written consent of co- owners] must be made in Vietnamese. Documents in foreign languages must be translated into Vietnamese. (Article 50(3) of Intellectual Property Law) Fees Registration of a literary work: 100,000 VND Registration of a computer program: 600,000 VND51 Where to apply Copyright/Related rights authors/owners shall directly file or empower other organizations or individuals to file applications for Copyright/Related rights Registration at the Copyright Office, or the Departments of Culture and Information in the localities where the authors/owners of copyright/related rights reside or where their offices are located. (1.1)52

Examination There is only a formal examination. There is no substantial examination. Notice Within fifteen working days after the receipt of a valid dossier, the state management agency in charge of copyright and related rights [the Copyright Office] shall have to grant a registered copyright certificate or registered related rights certificate to the applicant. In the case of refusal to grant registered copyright certificates or registered related rights certificates, the state management agency in charge of copyright and related rights must notify the applicant in writing. (Article 52 of Intellectual Property Law) Publication 1. Registered copyright certificates and registered related rights certificates shall be recorded in the national register of copyright and related rights.

51 Page 108 of the “Anti-copying and imitation manual (Vietnam) (version 2012).” 52 http://www.cov.gov.vn/cbqen/index.php?option=com_content&view=article&id=696%3A-instructions-on- copyright-and-related-rights-registration&catid=61%3Ath-tc-ng-ky&Itemid=74

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2. Decisions on the grant, re-grant, renewal or revocation of registered copyright certificates and registered related rights certificates shall be published in the Official Gazette on copyright and related rights. (Article 54 of Intellectual Property Law)

Attachiment1 (III Vietnam)

Copyright

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Appendix 4 Roadmap (tentative)

Details of each item and timeline shall be coordinated and discussed with the Myanmar side.

Road Map (tentative) IPO Est. 3 years after IP Laws Start receiving IPO Est. applications Establishment of IPO Regulations Law in force Regulations in force

Submit to Laws and Draft laws Parliament Deliberation of Regulations Draft law Laws and Rules Follow-up Draft detailed rules and relulations Consideration and law amendment For PCT & Madrid Protocol accession urge Business Flow Business Flow, documents/format

n Business Manual (simple ver.) t Business Manual (detailed ver.) Improving Business Flow & Manuals Organizaion Organization Structure

-317- Visualizing Org. structure Recruit/training

Introduction of Info. IT Environment Dissemination System Introduction of Application Acceptance

priority Business Flow System Introduction of Search System Introduction of Electric Filing system Consideration of Establishing Patent Attorney Private Association Association and necessary Cooperation Consideration of Establishing Private IP Association and necessary Cooperation

ac Development of Human Training Program Training for IPO Staff s c Development of ordingly DlDevelopmen t Training Program Training for Customs, Police & Court staffs

IP Awareness Increasing IP Awareness (basic) Increasing IP Awareness: (basic) + (advance) Roadmap (tentative) IPO Est. 3 years after IP Laws Start receiving applications IPO Est. Regulations IP System Law in force Regulations in force

System to promote Cooperation with Concerned Ministries for Establishing IPO IP Exploitation Consideration of CCB Setting-Up Role, Functions, Structure of CCB Central Control Board Legislation process for CCB P

romoting Enforcement

Consideration of Strengthening Cooperation with Concerned Ministries MOST/IPO Consideration of IP Enforcement Measures Sanctions and Control Measures Toward Law Amendments Cooperation with and Increase Awareness for Concerned Ministries and

-318- Business Associations, functions Strengthening Enforcement, Custom Seizure Registration, Customs Consideration of IP Enforcement Measures Cooperation with Companies

Strengthening Enforcement, Seizure Control, Police Consideration of IP Enforcement Measures

of IPsyst of Cooppperation with Private Companies

IP Court Consideration of IP Enforcement Measures Consideration of IP Court Establishment IP Training for Judges e

m MSA (new) Consideration of MSA Establishment Market Surveillance Agency

IP Basic Law Consideration of IP Basic Law

Other IP related Consideration of Trade Secret and Other related laws law (ex.Trade Secret Protection) Starting Legislation Process Road Map IPO Est. 3 years after IP Laws Start receiving Regulations applications IPO Est. (tentative) Law in force Regulations in force Cooperation with ministries for Consideration of Role, Functions IP Exploitaion establishing IPO (CCB incl.) and Org. of CCB IP

S Considering actual measures Strengggthening control a gainst infrin g,gement, seizure reg istration ystem EfEnforcement of IP Enforcement and cooperation with companies Consideration of Establishing IP Court Training for IP Court Judges Consideration of IP related laws Legislation (IP basic law, trade secret,,ect.) Legislation process of IP related laws

Draft law Laws and Drafting Submission Regulations Deliberation

-319- Draft Detailed Rules and Regulations Preparation for accession to PCT, Madrid PtProtocol and dtht other treati es

Business Flow Consideration of Business Flow Preparation of Business Es Manuals (simple ver.) Preparation of Business Manuals (detailed ver.) tablishmen Consideration and Visualizing Organization of Organization Structure Recruit/Training

Introduction of t

of IPO of IT Info. Dissemination System Introduction of Application Acceptance Business Flow Introduction of Search System Introduction of Electric Filing System Establishing Patent Attorney Association and Private Association necessary Cooperation

Development of Human Develop. Training Program Training for IPO Staffs

IPIP AwarenessAwareness Increasing IP Awareness (basic) Increasing IP Awareness : (basic) + (advanced)

Appendix 5 Lists of Names

APPENDIX 5 Lists of Names

1. List of Delegate

[Japan International Cooperation Agency] (JICA) Name Organization Mr. Joji Senior Advisor to the Director General, Southeast Asia and Pacific KOIKE Department and Industrial Development and Public Policy Department Mr. Naoto Advisor, Private Sector Development Division 1, Industrial MUKAI Development and Public Policy Department Mr. Yuta Assistant Director, Private Sector Development Division 1, YASUDA Industrial Development and Public Policy Department

[Agency for Cultural Affairs] Name Organization Mr. Satoshi Officer, International Affairs Division TSUZUKI

[Japan Patent Office](JPO) Name Organization Mr. Yoshiaki Senior Analyst of Intellectual Property Information, MIBU Information Dissemination and Policy Promotion Division Mr. Kosuke Director of Regional Cooperation Office, MINAMI International Cooperation Division Mr. Masanobu Deputy Director, International Cooperation Division, UEDA Mr. Nao Specialist for International Information, Regional Cooperation Office, NAKATSUJI International Cooperation Division

[Japan External Trade Organization](JETRO) Name Organization Mr. Yasuo Director of Intellectual Property Department, Bangkok Office OHKUMA

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[JPO Support Team] Name Organization Mr. Kenichi Professor, School of Law, Meiji University KUMAGAI Mr. Ayumu Senior Partner, Attorney-at-Law, Kitahama Partners IIJIMA Mr. Yuji Vice President, Patent Attorney, TSURUYA Ito International Patent Office Ms. Setsuko Professor, Patent Attorney, ASAMI Graduate School of Innovation Studies, Tokyo University of Science Mr. Takao Patent Attorney, Okabe International Patent Office MATSUI

[Consultant Team] Name Organization Mr. Takahiko Secretary General/Research Fellow-in-Chief, KINOSHITA Kyoto Comparative Law Center Ms. Chiaki Research Fellow, Kyoto Comparative Law Center KIKUMOTO Mr. Takamitsu Attorney-at-Law, SHIGETOMI Oh-Ebashi LPC & Partners Mr. Toshiya Attorney-at-Law, FURUSHO Oh-Ebashi LPC & Partners Mr. Yoshiyuki Attorney-at-Law, Nishimura & Asahi MIYASHITA Mr. Yusuke Attorney-at-Law, Representative of Yangon Office, Nishimura & Asahi YUKAWA

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2. Members of JPO Support Team

(as of Feb 2014) Support Team for Organizing Myanmar’s Intellectual Property System (Japan) Name Organization Ms. Setsuko Professor, Patent Attorney, 1 ASAMI Graduate School of Innovation Studies, Tokyo University of Science Mr. Fumio Senior Manager, Intellectual Property Development Promotion 2 IMOTO Division, NEC Corporation Mr. Kenichi Professor, School of Law, Meiji University ○ 3 KUMAGAI Senior Advisor to the Director General, Southeast Asia and Pacific Mr. Joji 4 Department and Industrial Development and Public Policy Department, KOIKE JICA Executive General Manager, Toyota Technical Development Mr. Takeshi 5 Corporation SASAKI Vice President, Japan Intellectual Property Association Mr. Keiichi General Manager of Legal & Intellectual Property Division, Unicharm 6 JIBIKI Corporation Mr. Satoshi 7 Officer, International Affairs Division, Agency for Cultural Affairs TSUZUKI Mr. Yuji Vice President, Patent Attorney, 8 TSURUYA Ito International Patent Office Mr. Kunio 9 Partner, Attorney-at-Law, TMI Associates NAMEKATA Mr. Hirokazu 10 General Manager, Intellectual Property Division, Honda Motor Co.,Ltd. BESSHO Mr. Kosuke Director of Regional Cooperation Office, 11 MINAMI International Cooperation Division, JPO Mr. Ryoichi 12 Partner, Attorney-at-Law, Nagashima Ohno & Tsunematsu MIMURA Mr. Kosuke Professor and Government Attorney, International Cooperation 13 YOKOMAKU Department, Research and Training Institute, Ministry of Justice 13 members (○: team leader ) (order of the Japanese syllabary)

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3. Member of IP Support Team (as of Oct. 2013) Establishment of Myanmar Intellectual Property Administration System (Myanmar) Name Organization Director General, Department of Advanced Science and Technology, ○ 1 Mr. Kyaw Zwa Soe Ministry of Science and Technology Professor, Law Department Yangon University, 2 Dr. Khin Mar Yee Ministry of Education Advisor, Law Department Yangon University, 3 Dr. Than Nwe Ministry of Education 4 Mr. Aung Naing Director, Union Attorney General Office 5 Mr. Taza Aung Win Director, Ministry of Commence 6 Mr. Aung Kyaw Oo Director, Ministry of Information Union of Myanmar Federation of Chambers of Commerce and 7 Mr. Aye Lwin Industry Union of Myanmar Federation of Chambers of Commerce and 8 Dr. Myo Thet Industry Mr. Tin Maung 9 Central Organizating Committee, Myanmar Engineering Society Naing Mr. Za Yaw Na 10 Myanmar Computer Federation Chan 11 Mr. Kyaw Sein Member of Lower Parliament 12 Mr. Than Maung Member of Upper Parliament 13 Mr. Thein Aung Law Firm, Myanmar Trademark and Patent Law Firm 14 Dr. Moe Moe Thwe Deputy Director, IP Section Ministry of Science and Technology 15 Dr. Toe Myat Nu Deputy Director, IP Section Ministry of Science and Technology 15 members (○: team leader )

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4. Member of IP Section/MOST (as of Oct. 2013) No. Name Title In charge 1 Dr. Moe Moe Thwe Deputy Director Head 2 Dr. Seint Thandar Tun Deputy Director Trademark 3 Dr. Aye Thiri Wai Deputy Director Trademark 4 Dr. Aye Aye Maw Assistant Director Trademark 5 U Nay Aung Myo Staff Officer Trademark 6 Daw Ei Ei Khaing Staff Officer Trademark 7 Daw Khin Sandar Tun Demonstrator Trademark 8 Dr. Kyi Pyar Moe Assistant Director Industrial Design 9 Dr. Khin Sandar Win Assistant Director Industrial Design 10 U Kyaw Khine Lin Staff Officer Industrial Design 11 Daw Swe Sandi Oo Demonstrator Industrial Design 12 Daw Su Mon Hlaing Tutor Industrial Design 13 Dr. Hnin Nwe Aye Assistant Director Patent 14 Dr. Pwint Phyo Win Deputy Director Patent 15 Daw Thin Thin Soe Assistant Director Patent 16 U Lin Aung Swe Assistant Director Patent 17 Daw Tin Myo Myint Staff Officer Patent 18 Daw Theingi Win Lwin Demonstrator Patent 19 Dr. Toe Myat Nu Deputy Director Copyright 20 Dr. Phyu Hnin Khaing Deputy Director Copyright 21 Daw Zin Zin Win Kyaw Staff Officer Copyright 22 Daw Ei Khwar Nyo Soe Staff Officer Copyright 23 U Aye Mying Naing Demonstrator Copyright 24 Dr. Win Mar Oo Deputy Director Information Technology 25 Dr. May Phyo Thwe Deputy Director Information Technology 26 Daw Wai Le Yi Assistant Director Information Technology 27 Daw Yimon Hlaing Tutor Information Technology 28 Daw Khaing Nwe Thin Demonstrator Information Technology 29 Daw Wint Thin Zar Myo Demonstrator Information Technology 30 U Htwe Win Demonstrator Dispute Settlement 31 Daw Aye Su Htwe Demonstrator Dispute Settlement 32 Daw Thi Thi Htun Demonstrator Dispute Settlement 33 Daw Moe Moe San Staff Officer Staff 34 Daw Khaing Zar Myint Clerk Staff 35 Daw Hnin Wai Aung Clerk Staff 36 Daw Zin Mar Myint Clerk Staff

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5. List of Interviewees of 2nd Survey in Myanmar

Conducted by Consultant Team: 30 October, 2013 – 8 November, 2013 # Place Interviewees 1 Kelvin Chia Yangon Ltd. ・U Than Maung, Attorney at Law(Advocate) (Law Firm) 2 Myanmar Printers and ・Dr. Sein Win, General Secretary Publishers Association ・U Maung Maung Naing, Propertier, Myit Tar Moe Press 3 UMFCCI（Union of Myanmar ・Aye Lwin, Joint Secretary General Federation of Chamber of ・U Than Maung, Attorney at Law(Advocate) Commerce and Industry） ・Thein Aung, Attorney at Law(Advocate) ・Myo Aung, Managing Director ・Stain Lin Oo, Myanmar Trademark & Patent Law Firm ・U Khun Win Haling Supreme Court Advocate ・Nay La, Supreme Court Advocate, Nay La & Associates ・Myint Lwin LLB, DBL，U Myint Lwin Law Office ・Aye Pa Pa Soe, Assistant Executive officer services department UMFCCI 4 Yangon University, ・Dr. Kyin Mar Yee, Head of Department, Department of Law ・Dr. khin Phone Myint Kyu, Professor, Department of Law ・Dr. Myint Thu Myaing, Professor, Department of Law 5 Ministry of Science and ・U Kyaw Zwa Soe, Director General, Department of Advanced Technology Science and Technology ・Dr. Toe Myat Nu, Deputy Director, Copyright Section ・Dr. Sein Thunder Tun, Deputy Director, Trademark Section ・Dr. Kyi Pyar Moe, Assistant Director, Industrial Design Section ・Dr. Hnin New Aye, Assistant Director, Patent Section 6 Ministry of Information ・Ye Tint, Director General, Information and Public Relations Department ・Thad Tin, Deputy Director General ・Unidentified person, Copyright Department 7 Ministry of Industry ・Daw Tin Tin Htoo, Deputy Director, Directorate of Industrial Planning, Foreign Relations Department ・U Thang Oo, Assistant Director ・U Myo Zarm Win, Assistant Director ・U Soe Zaw Latt, Head of Section 8 Ministry of Communication ・Myo Swe, Chief Engineer, Myanmar Posts and and Information Technology Telecommunications ・Ye Naing Moe, Deputy Chief Engineer, Information Technology Department

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9 Ministry of Commerce ・Mr. Khin Maung Lay, Director General ・Mr. Soe Win, Deputy Director ・Mr. Khin Saw Deputy Director ・Ms. Khin Moe Aye, Deputy Director ・Ms. Myo Myo Htike, Assistant Director 10 Ministry of Home Affairs ・Pol. Colonel Soe Naing Oo, Criminal Investigation Department (CID) ・Pol. LT. Col. Aung Thu, Grade (1) Staff officer, CID ・Pol. Lt. Col. Thet Shay ・Pol. Capt. No Win Aung ・Pol. Lt. Hla Thein Soe ・Pol. Lt. Aung Zaya

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